THE  LIBRARY 

OF 

THE  UNIVERSITY 
OF  CALIFORNIA 

LOS  ANGELES 

SCHOOL  OF  LAW 


PATENT  DEPARTMENT 
FISK  RUBBER  OO. 


TRADE  MARK  LAWS 

OF  THE 

WORLD 


COMPILED  AND   EDITED  BY 

JOHN    H.     RUEGE 

Ml 
AND 

W.      B.      GRAHAM 


FROM  THE  LIBRARY  AND  RECORDS  OF 

WM.    WALLACE    WHITE 

OP  THE   NEW   YORK   BAR 
AND  WITH  HIS  CO-OPERATION 


NEW     YORK 

TRADE  MARK  LAW  PUBLISHING  CO. 
1922 


Copyright,   1922 
By  TRADE  MARK  LAW  PUBLISHING  CO. 


PRESS  OP 

ROBERT  ROY  CO..  INC. 
NEW  YORK 


INTRODUCTION 

In  the  many  years  that  I  have  studied  international  rela- 
tions and  problems  and  kept  in  touch  with  the  activities  of  the 
peoples  of  other  countries  in  their  intercourse  with  the  United 
States,  I  have  come  to  realize  that  commerce  is  perhaps  the  most 
powerful  agency  of  civilization  and  general  international 
advancement. 

Trade  of  any  country  with  foreign  lands  requires  for  its 
development,  on  the  one  hand,  enterprise  and  energy  and,  on 
the  other,  opportunity  and  a  sufficient  measure  of  protection. 
The  present  field  of  foreign  commerce  for  the  United  States  may 
be  said  to  be  world  wide,  even  though  unfortunate  Eussia  may 
be  temporarily  excepted,  while  protection  is  generally  afforded 
by  local  laws,  conventions  and  established  commercial  practice, 
but,  in  a  most  important  measure,  by  the  mark  of  origin  carried 
by  the  goods  in  the  shape  of  a  trade  mark. 

The  courts  have  described  a  trade  mark  as  the  "  commercial 
signature*'  of  the  owner,  but  the  time  has  not  yet  arrived  when 
such  a  "signature"  will  be  recognized  throughout  the  world 
unless  ownership  be  first  assured  by  compliance  with  the  require- 
ments of  individual  countries;  and  it  is  the  realization  of  this 
fact  that  leads  me  to  regard  the  work  which  this  statement  intro- 
duces as  of  exceptional  significance  and  usefulness. 

Failure  to  recognize  the  necessity  for  compliance  with  the 
requirements  of  the  trade  mark  laws  of  individual  countries  has 
often  led  to  the  loss  of  valuable  rights  and  has  jeopardized  com- 
mercial enterprises.  The  best  insurance  against  such  loss  and 
failure  lies  in  knowledge  of  and  obedience  to  these  laws.  As 
this  work  affords  the  needed  information,  it  is  hoped  and  be- 
lieved that  it  will  be  a  real  factor  in  the  development  and  exten- 
sion of  our  foreign  commerce. 

Mr.  Wm.  Wallace  White,  through  whose  foresight  and  co- 
operation this  work  has  been  made  possible,  has  long  been 

iii 

607020' 

LAW 


iv 

recognized  throughout  Pan-American  countries  and  also  in 
Europe  and  Asia  as  an  authority  on  patents  and  trade  marks. 
This  compilation  therefore  of  laws  on  this  subject  is  entitled  to 
wide  appreciation  and  circulation. 

JOHN  BARRETT, 

Former  Director  General,  Pan-Ameri- 
can Union,  Washington,  D.  €.;  former 
United  States  Minister  to  Siam,  Ar- 
gentina, Panama,  and  Colombia;  now 
Counsellor  and  Adviser  in  Interna- 
tional Affairs. 

Metropolitan  Club, 

Washington,  D.  C.,  July  1,  1922. 


FOREWORD 

For  years  past  I  have  had  in  mind  the  prepara- 
tion for  publication  of  the  material  contained  in  this 
volume,  but  have  not  found  it  possible  to  take  the  time 
from  my  professional  labors. 

I  am  gratified  indeed  that  Messrs.  Ruege  and 
Graham  have  persisted  during  the  long  period  of  time 
they  have  had  to  give  to  the  work,  and  I  feel  that  from 
my  examination  of  the  volume  I  am  warranted  in  con- 
gratulating them  upon  the  completion,  of  what  has 
certainly  been  an  extremely  arduous  task,  in  a  most 
workmanlike  manner. 

WM.  WALLACE  WHITE. 
New  York,  July  1,  1922. 


PREFACE. 

The  present  work,  the  first  publication  in  the  English  lan- 
guage of  the  trade  mark  laws  of  the  world  in  extenso,  is  intended 
to  meet  an  existing  need  evidenced  by  a  constant  demand  on  the 
part  of  those  most  interested  in  the  subject  of  trade  marks  and 
their  protection.  Lawyers,  patent  attorneys,  manufacturers, 
exporters  and  others  for  whom  the  trade  mark  has  special  inter- 
est, have  contributed  to  this  demand  for  an  accurate  compilation 
of  the  laws  of  the  world  (for  the  texts  which  are  the  bases  of 
trade  mark  protection). 

In  the  preparation  of  the  work,  great  care  has  been  taken 
to  obtain  the  laws  from  trustworthy  sources,  and,  where  the 
laws  are  in  foreign  languages,  to  provide  reliable  and  accurate 
translations. 

Access  to  the  extensive  library  of  Mr.  White,  including 
original  manuscripts  as  well  as  bound  volumes,  has  made  this 
compilation  possible. 

The  following  works,  in  particular,  have  been  made  use  of 
for  reference  and  comparison: 

La  PropriSte"  Industrielle ; 

Recueil  General  de  la  Legislation  et  des  Traites  concernant 
la  Propriety  Industrielle,  Berne  [v.  d.] ; 

Official  Gazette  of  the  United  States  Patent  Office; 

Leyes  y  Beglamentos  sobre  Privilegios  de  Invencion  y 
Marcas  de  Fabrica  en  los  Paises  Hispano- 
Americanos,  etc. — Washington  1904; 

Patent  and  Trade  Mark  Review,  New  York,  1902 — ; 

Malloy's   Treaties,   Conventions,   International   A.cts, 
Protocols  and  Agreements  between  the  United 
States  of  America  and  other  Powers,  etc.,  Washing- 
ton, 1910. 

Supplementary  features  and  provisions  in  the  way  of  reg- 
ulations, regulatory  decrees,  schedules  of  fees  and  forms,  have 
been  omitted  as,  however  useful  in  practice,  these  are  not  in- 
tegral parts  of  the  basic  laws,  and  are  so  numerous  as  to  make 
their  inclusion  entirely  impracticable.  Where  fees  are  fixed  in 
the  basic  law  they  should  not  be  accepted  as  authoritative  today, 
due  to  changes  being  frequently  made  incidental  to  the  marked 
actual  variations  in  monetary  standards,  nor  as  comprehensive 

vii 


Vlll 

of  all  expense  as  the  law  usually  makes  no  express  provision  for 
cost  of  official  publication,  translation,  notary  fees,  stamped 
paper,  etc.,  etc. 

It  is  believed  that  the  labor  and  care  expended  upon  the 
work  warrant  the  belief  that  the  book  will  be  found  to  meet  the 
needs  of  those  using  it. 

JOHN  H.  RUEGE, 
New  York,  July  1,  1922.  W.  B.  GBAHAM. 


ORIGINAL  SOURCES  OF  INFORMATION 

The  following  materials  used  by  the  compilers  are  found  in 
the  library  of  Wm.  Wallace  White : 

ARGENTINA — Ley  No.  3975  de  Marcas  de  Fabrica,  de  Comercio  y  de  Agricultura,  etc. 

Ministerio  de  Agricultura,  Buenos  Aires,  1918. 
AUSTRALIAN  COMMONWEALTH — Official  texts. 
AUSTRIA — Der  Schutz  der  Erfindungen,  Marken  und  Muster   .    .    .   herausgegeben 

von  Dr.  Paul  Schulz,  2d  ed.,  Vienna,  1906-13. 
BAHAMA  ISLANDS — Official  text. 
BARBADOS — Official  text. 
BASUTOLAND— Official  text. 
BELGIUM — Lois  et  Reglements  concernant  les  Marques  de  Fabrique  ou  de  Commerce, 

Ministere  de  1'Industrie  et  du  Travail,  Administration  de  1'Industrie,  Brussels, 

1912. 

BERMUDA — Official  text. 

BOLIVIA — Boletin  Departamentol,  La  Paz,  January  15,  1918. 
BRAZIL — Tratado  Theorico  e  Practice  de  Marcas  Industriaes  e  Nome  Commercial, 

etc.    For  J.  L.  de  Almeida  Nogueira  e  Guilherme  Fischer  Junior,  Sao  Paulo,  1910. 
BRITISH  CENTRAL  AFRICA  PROTECTORATE — Official  text. 
BRITISH  GUIANA — Official  text. 
BRITISH  NORTH  BORNEO — Official  text. 
BULGARIA — Official  text. 
CANADA— Official  text. 
CEYLON — Official  text. 
CHILE — Leyes  y  Reglamentos  sobre  Privilegios  de  Invencion  y  Marcas  de  Fabrica,  etc. 

Washington,  1904. 
CHINA — Treaties,  Conventions,  International  Acts,  Protocols  and  Agreements  between 

the  United  States  and  Other  Powers.    Compiled  by  William  M.  Malloy,  Wash- 
ington, 1910. 
COLOMBIA — Legislation  vigente  sobre  Registro  de  Marcas  de  Fabrica,  de  Comercio 

y  de  Agricultura,  etc.  [in  Spanish,  English,  French  and  German],  Bogota,  1915. 
CONGO  FREE  STATE — Receuil  General   .    .    .    concernant  la   Propriete  Industrielle, 

vol.  3.    Berne,  1899. 
COSTA  RICA — Ley  y  Reglamento  sobre  Marcas  de  Fabrica  y  de  Comercio,  editadas 

de  orden  del  Secretario  de  Estado  en  el  Despacho  de  Hacienda  y  Comercio,  por 

Don  Manuel  J.  Jiminez.    [San  Jose],  1903. 
CUBA — Marcas  y  Patentes,  Dibujos  y  Modelos  Industriales,  etc.    Por  Pedro  Diaz- 

martinez,  Habana,  [1916]. 
CuRAc.ao — Same  as  The  Netherlands. 
CYPRUS — Official  text. 
CZECHOSLOVAKIA — Official  text. 

DANZIG  [FREE  CITY  OF] — Gesetsblatt  fur  die  Freie  Stadt  Danzig,  1921,  No.  19. 
DENMARK— Manuscript  text  prepared  from  originals  at  Copenhagen. 
DOMINICAN  REPUBLIC— Ley  de  Registro  de  Marcas  de  Fabrica  y  de  Comercio,  Santo 

Domingo,   1917    [for   law];   Gaceta   Oficiol,   Santo  Domingo,    1917,   No.   2861 

[for  Order  No.  12]. 

DUTCH  INDIES— Same  as  The  Netherlands. 
EAST  AFRICA  PROTECTORATE — Official  text. 
ECUADOR— Ley  de  Marcas,  Ministerio  de  Hacienda,  Quito,  1915. 
ERITREA— Leggi  e  Regolamenti  sulla  Proprieta  Industriale,  etc.,  Rome,  1914. 

ix 


ESTHONIA— 'Code  of  Laws  [Russia],  Vol.  XI,  Part  2,  Edition  of  1913,  Commercial 
Regulations,  Chap.  V,  Sees.  124-126  [for  original  Russian  law];  Riigi  Teataja, 
No.  39,  1921  [for  amendatory  provisions— Law  No.  29,  of  April  IS,  1921, 
Sees.  24-33]. 

FALKLAND  ISLANDS— Official  text. 
FIJI  ISLANDS — Official  text. 
FINLAND — Storfuretendomet   Finlands   Forsattnings-Samling,    [Helsingfors]    No.   3 

of  1889. 
FRANCE — Recueil    General    .     .     .    concernant    la    Propriete    Industrielle,   vol.    1, 

Berne,  1899. 
GAMBIA — Official  text. 

GERMANY — Textausgabe  der  gesamten  deutschen  Gesetzgebung     .     .     .     auf  dem 
Gebiete  des  Patent-,  Muster-  und  Zeichenwesens  und  des  Urheberrechts,  heraus- 
gegeben  von  Dr.  Bruno  Alexander-Katz,  Berlin,  1912. 
GOLD  COAST  COLONY — Official  text. 
GREAT  BRITAIN — Official  text. 

GREECE — Socolis  on  Commercial  and  Industrial  Marks,  Athens,  1902. 
GUATEMALA — Leyes   y   Reglamentos   sobre    Privilegios   de   Invencion   y   Marcas   de 

Fabrica,  etc.,  Washington,  1904. 
HAITI — Le  Moniteur,  Port-au-Prince,  June  21,  1919. 
HAWAII — Official  text. 

HONDURAS— Boletin  Legislative),  No.  21,  Tegucigalpa,  April  15,  1919. 
HONGKONG — Official  text. 

HUNGARY — Gesets-Sammlung,   [Budapest],  February  IS,  1890. 

ICELAND — Lpv    om    Varemaerker,    Amahenborg,    November    13,    1903    [for    law] : 
Anordning  hvorved  den  i  Loven  af  13  November  1903,  etc.,  Amalienborg,  April 
16,  1918  [for  Royal  Decree]. 
ITALY — Leggi  e  Regolamenti  sulle  Privative  Industrial}  sui  Marchi  e  Segni  Distintivi 

di  Fabbrica,  etc.,  Stamperia  Reale,  Roma  [n.  d.]. 
JAMAICA — Offical  text. 

JAPAN — Official  text.     (See  also:  de  Becker,  work  cited  in  foot-note  to  law.) 
JUGOSLAVIA — Slusbene  Novine,  Belgrade,  November  27,  1920. 

KOREA — Treaties,  Conventions,  International  Acts,  Protocols,  and  Agreements  be- 
tween the  United  States  and  Other  Powers.  Compiled  by  William  M.  Molloy, 
Washington,  1910. 

LATVIA— Code  of   Laws   [Russia],  Vol.  XI,  Part  2,  Edition  of   1913,  Commercial 
Regulations,  Chap.  V,  Sees.  124-146  [for  original  Russian  Law] ;  Valdibas  Vest- 
nesis,  of  May  17,  1922  [for  amendment]. 
LEEWARD  ISLANDS — The  Revised  Edition  of  the  Federal  Acts  of  the  Leeward  Islands, 

etc.,  Vol.  II,  Antigua,  1915. 
LIBERIA — Original  texts. 

LITHUANIA— -Code  of  Laws  [Russia],  Vol.  XI,  Part  2,  Edition  of  1913,  Commercial 
Regulations,  Chap.  V.  Sees.   124-146  [for  original  Russian  Law] ;   Vyriausybes 
Ziniu,  No.  37,  Sec.  2,  Kovno,  1920  [for  constitutional  provision]. 
LUXEMBERG — Memorial  du  Grand-Ducht  de  Luxembourg,  June  12,  1883. 
MALTA — Official  texts  [English  and  Italian]. 
MAURITIUS — Official  text. 
MEXICO — Leyes  y  Reglamentos  sobre  Privilegios  de  Invencion  y  Marcas  de  Fabrica, 

etc.;  Washington,  1904. 
MOROCCO  [FRENCH  ZONE]— 33  La  Propriete  Industrielle,  1917,  pp.  46  and  ff.  and  60 

and  ff. 

NETHERLANDS,  THE — Nederlandsche  Staatswetten,  No.  47,  Zwolle,  1919. 
NEWFOUNDLAND — Official  text. 
NEW  ZEALAND — Official  text. 
NICARAGUA — Leyes  sobre  Patentes  de  Inventos  y  Marcas  de  Fabricas  Nacionales  o 

Extranjeros,  Managua,  [n.  d.]. 
NIGERIA — Official  text. 
NORWAY — Lov  av  2  juli  1910  om  varemaerker  og  utilborlige  varekjendetegen  og 

forretningsnavn,  Kristiania,  1910. 
PALESTINE — Official  text. 

PANAMA — Leyes  sobre  Patentes  de  Invencion  y  Registro  de  Marcas  de  Fabrica  y  de 
Comercio,  Edicion  Oficial,  Secretaria  de  Fomento,  Panama,  1915. 


XI 

PARAGUAY — Leyes    y    Reglamentos    sobre    Privilegios    de    Invencion    y    Marcas    de 

Fabrica,  etc.,  Washington,  1904  [Law] ;  Diario  Oficial,  Asuncion,  April  21-22-23- 

24-26,  1919. 
PERU — Leyes  y  Reglamentos  sobre  Privilegios  de  Invencion  y  Marcas  de  Fabrica, 

etc.,  Washington,  1904. 
PHILIPPINE  ISLANDS — Official  text. 

POLAND— Dsiennik  Prdiv  Panseva  Polskieg,  No.  13,  February  7,  1919. 
PORTO  Rico — Revised  Statutes  and  Codes  of  Porto  Rico.,  etc.,  San  Juan,  fn.  d.l 
PORTUGAL — The   Patent  and   Trade   Mark   Laws   of    Portugal,  by   Guilherme,  Joao 

Carlos  Henriques,  Lisbon,  1884. 
PORTUGUESE  COLONIES — Manuscript  text. 
RHODESIA — Official  texts. 
RUMANIA — Manuscript  text. 
RUSSIA — Code  of  Laws,  Vol.  XI,  Part  2,  Edition  of  1913,  Commercial  Regulations, 

Chap.  V.,  Sees.  124-146. 
ST.  LUCIA — The  Commercial  Code  of  St.  Lucia,  published  by  Authority,  St.  Lucia, 

1916. 

SALVADOR— Diario  Oficial,  San  Salvador,  July  30.  1921. 
SEYCHELLES  [COLONY  OF] — Official  text. 
SIAM — Official  text. 
SIERRA  LEONE — Official  text. 
SOUTH  AFRICAN  UNION — Official  text. 

SPAIN — Ley  de  16  de  Mayo  de  1902  sobre  Propiedad  Industrial  [published  by  Fran- 
cisco Elzaburu],  Madrid,  [n.  d.] 
SURINAM — Same  as  The  Netherlands. 
SWEDEN — Lagarna  Ang.  Patent,  Varumarken,  Monster  och  Modeller   [published  by 

Hugo  E.  G.  Hamilton],  Stockholm,  1917. 
SWITZERLAND — Recueil  General  ....  concernant  la  Propriete  Industrielle,  Vol.  2, 

Berne,  1899. 

SYRIA  AND  LEBANON — 37  La  Propriete  Industrielle,  p.  119,  October,  1921. 
TANGANYIKA  TERRITORY — Official  text. 
TRINIDAD  AND  TOBAGO — Official  text. 
TUNIS— Journal  Officiel,  Tunis,  June  6,  1889. 
TURKEY — Reglement  Relatif  aux  Marques  de  Fabrique  et  de  Commerce — Le  28  Avril 

1304 — 11  Mai  1888 — Direction  General  de  1'Industrie,  Ministere  du  Commerce  et 

de  1'Agriculture,  Constantinople,  1908. 
UGANDA  PROTECTORATE — Official  text. 
UNITED  STATES  OF  AMERICA — Official  text. 

URUGUAY— Carpeta  No.  196  de  1908— No.  57,  Montevideo,  July  5,  1909. 
VENEZUELA — Leyes   y    Reglamentos    sobre    Privilegios   de    Invencion   y    Marcas   de 

Fabrica,  etc.,  Washington,  1904. 

VIRGIN  ISLANDS  OF  THE  UNITED  STATES — Official  text. 
ZANZIBAR — Official  text. 


ARGENTINA 

LAW  NO.  3975  OF  NOVEMBER  25, 1900 
TITLE  I 


What  constitutes  a  mark 

ARTICLE  1.  There  may  be  used  as  marks  of  manufacture, 
of  commerce,  or  of  agriculture:  the  denominations  of  objects 
or  the  names  of  persons  under  a  particular  form,  emblems, 
monograms,  engravings  or  prints,  seals,  vignettes  and  reliefs, 
borders,  fancy  words  or  names,  letters  and  ciphers  with  special 
design  or  forming  a  combination,  the  containers  or  wrappers 
of  objects,  and  any  other  sign  with  which  it  is  desired  to  dis- 
tinguish the  manufactures  of  a  factory,  objects  of  commerce, 
or  products  of  the  earth  and  of  the  agricultural  industry. 

Marks  may  likewise  be  adopted,  under  the  conditions  and 
for  the  effects  of  this  law,  by  those  that  dedicate  themselves  to 
the  extractive  (mining)  industries. 

ART.  2.  The  mark  may  be  affixed  to  the  containers  or 
wrappers,  or  to  the  objects  themselves  that  it  is  desired  to 
distinguish. 

What  may  not  constitute  a  mark 

ART.  3.  There  shall  not  be  considered  as  marks  of  manu- 
facture, commerce,  or  agriculture: 

1)  Letters,  words,  names  or  distinctives  that  the  Nation 
or  the  Provinces  use  or  might  use ; 

2)  The  form  that  is  given  to  the  products  by  the  manu- 
facturer ; 

3)  The  color  of  the  products; 

4)  Terms  or  locutions  that  have  passed  into  general  use, 
and  signs  that  do  not  present  characteristics  of  novelty  and 
specialty ; 

5)  The  designations  usually  employed  for  indicating  the 
nature  of  the  products,  or  the  class  to  which  they  belong ; 

6)  Designs  or  expressions  contrary  to  morality. 

ART.  4.    Names  and  portraits  of  persons  may  not  be  used 
as  marks,  without  the  consent  of  those  or  their  heirs,  inclusive 
of  the  fourth  degree. 
Localities  of  private  domain — Names  of  places  and  towns 

ART.  5.    The  names  of  localities  of  private  domain  may  be 


2  ARGENTINA 

used  as  marks  only  by  the  proprietors  of  the  same,  unless  the 
said  names  belong  to  the  class  of  those  mentioned  in  the  fourth 
paragraph  of  Art.  3  and  there  be  adopted  suitable  distinctions 
for  avoiding  confusion.  Under  these  same  conditions  there  may 
be  employed  as  marks  the  names  of  places  or  towns. 

Right  of  opposition 

ART.  6.  The  exclusive  ownership  of  a  mark,  as  well  as 
the  right  to  oppose  the  use  of  any  other  that,  directly  or  in- 
directly may  produce  confusion  between  the  products,  shall 
correspond  to  the  industrial,  merchant,  or  agrarian,  that  shall 
have  fulfilled  the  requirements  demanded  by  this  law. 

ART.  7.    The  employment  of  a  mark  is  optional. 

Nevertheless,  it  may  be  obligatory  when  the  necessities  of 
public  expediency  so  require. 

ART.  8.  The  exclusive  ownership  of  a  mark  may  be  ac- 
quired solely  with  relation  to  the  object  for  which  it  shall  have 
been  solicited  and  which  must  be  specified  in  accordance  with 
the  second  paragraph  of  Art.  17. 

ART.  9.  The  ownership  of  a  mark  shall  pass  to  the  heirs 
and  may  be  transferred  by  contract  or  through  disposition  of 
last  will. 

Transfer,  assignment,  or  sale 

ART.  10.  The  assignment  or  sale  of  the  establishment  shall 
comprehend  that  of  the  mark,  save  stipulation  to  the  contrary, 
and  the  assignee  shall  have  the  right  to  make  use  of  the  said 
mark,  even  though  it  be  a  name,  in  the  same  way  that  the  as- 
signor did,  without  restrictions  other  than  those  that  are  ex- 
pressly imposed  in  the  deed  of  sale  or  assignment. 

ART.  11.  The  transfer  of  a  mark  shall  be  recorded  in  the 
Office  in  which  it  is  registered,  in  order  to  acquire  the  right  to 
use  it. 

ART.  12.    There  shall  be  considered  as  a  mark  in  use,  for 
the  effects  of  this  law,  only  that  with  respect  to  which  the  Office 
shall  have  granted  the  corresponding  certificate. 
Duration  of  registration 

ART.  13.  The  protection  of  the  rights  to  the  exclusive  use 
of  a  mark  shall  endure  for  only  ten  years,  which  may  be  ex- 
tended indefinitely  for  other  equal  terms,  by  there  being  ful- 
filled in  all  cases  the  necessary  formalities,  and  on  payment, 
each  time,  of  the  fees  that  are  mentioned  later  on. 
Extinction  of  right  of  ownership 

ART.  14.  The  right  of  ownership  of  a  mark  shall  become 
extinguished : 

1)  On  petition  of  the  interested  party; 


ARGENTINA  3 

2)  When  the  latter  shall  have  allowed  the  term  of  ten  years 
to  expire  without  effecting  its  renewal; 

3)  When — a  question  regarding  the  validity  of  a  mark  hav- 
ing been  raised — the  decision  has  been  to  the  effect  that  it  might 
not  be  granted,  either  because  it  belonged  to  another  person  or 
for  any  other  circumstance  from  among  those  enumerated  in 
this  law. 

ART.  15.  When  the  extinction  of  a  mark  results  through 
any  of  the  causes  mentioned  in  the  first  and  third  paragraphs 
of  the  preceding  article,  the  fact  must  be  published  in  the  form 
specified  in  Art.  37. 

CHAPTER  II 

FORMALITIES  FOR  ACQUIRING  THE  OWNERSHIP  OF  MARKS 
ART.  16.    Whoever  shall  desire  to  obtain  the  ownership  of 

a  mark  of  manufacture,  commerce,  or  agriculture,  must  solicit 

it  from  the  Office  of  Patents  of  Invention. 

ART.  17.     The  application  for  obtaining  a  mark  must  be 

accompanied  by: 

1)  Six  facsimiles  of  the  mark  of  which  it  is  desired  to  make 
use; 

2)  A  description,  in  duplicate,  of  the  mark  if  it  is  a  matter 
of  figures  or  of  emblems,  there  having  to  be  indicated  the  class 
of  objects  for  which  they  are  intended,  and  whether  they  are 
to  be  affixed  to  the  products  of  a  factory,  of  the  earth,  or  to 
objects  of  commerce ; 

3)  A  receipt  wherein  it  appears  that  there  has  been  paid 
into  the  Treasury  General  the  amount  of  the  fee  established  in 
Art.  38; 

4)  A  formal  power  of  attorney,  in  case  the  applicant  does 
not  appear  in  person ; 

5)  The  corresponding  authorization,  in  the  cases  of  Art.  4. 

Secret  method  of  imprinting 

ART.  18.  If  the  process  of  imprinting  the  mark  should  be 
a  secret  and  those  interested  wish  to  guard  it,  they  shall  so  state 
in  the  application  to  which  Art.  17  refers,  describing  the  process 
in  a  closed  and  sealed  envelope,  which  will  be  opened  only  in 
case  of  litigation. 

ART.  19.  Applications  that  shall  be  presented  shall  be 
recorded  by  means  of  a  brief  entry  which  shall  express,  in 
resume^  their  contents  and  the  date  and  hour  of  their  presenta- 
tion, in  a  book  whose  sheets  shall  be  foliated  and  rubricated  by 
the  respective  Ministry.  The  applicant  shall,  in  addition,  state 
whether  he  waives  judicial  procedure  in  the  case  of  opposition 
or  refusal  by  the  Office  to  grant  the  ownership  of  the  mark. 


4  ARGENTINA 

Act  of  presentation 

The  entry  shall  be  signed  by  the  Chief  of  the  Office,  the 
Secretary,  and  the  applicant,  to  whom  shall  be  given  a  receipt 
for  the  documents  presented,  on  which,  in  addition,  there  shall 
appear  the  number  of  the  entry. 

In  case  there  shall  be  solicited  an  authentic  copy  of  said 
entry,  it  shall  be  given  without  charge  other  than  that  of  the 
paper  on  which  it  is  drawn  up. 

Publication  of  applications 

AET.  20.  The  entry  to  which  the  preceding  article  refers 
having  been  made,  steps  shall  be  taken,  at  the  cost  of  those 
interested,  to  officially  publish  an  extract  from  the  application, 
the  date  of  its  presentation,  the  name  of  the  applicant,  and  an 
engraving  of  the  mark. 

Publication  shall  be  made  for  five  consecutive  days  in  the 
Capital  of  the  Republic  and  in  the  Province  or  Territory  in 
which  the  applicant  has  his  domicile. 

AKT.  21.  If — thirty  days  having  elapsed  since  the  last  pub- 
lication prescribed  in  the  preceding  article — no  one  has  pre- 
sented himself  opposing  the  concession,  and  there  shall  not 
have  been  granted,  previously,  like  or  similar  marks  under  the 
conditions  of  Arts.  6  and  8,  the  mark  solicited  shall  be  registered 
and  certificate  of  its  ownership  shall  be  issued. 

Right  of  priority 

AET.  22.  The  right  of  priority  as  regards  the  ownership 
of  a  mark  shall  be  granted  in  accordance  with  the  day  and  hour 
on  which  the  application  shall  be  presented  at  the  Office. 

AET.  23.  The  certificate  of  the  mark  that  the  Patent  Office 
shall  give  will  consist  of  a  certified  copy  of  the  decree  that 
grants  it,  accompanied  by  the  duplicate  of  the  description  and 
designs;  it  shall  be  drawn  up  in  the  name  of  the  Nation,  there 
being  invoked  therein  the  authorization  of  the  Government,  and 
shall  bear  the  signature  of  the  Chief  of  the  Office  and  the  Secre- 
tary, with  the  seal  of  the  same. 

AET.  24.  The  deposit  prescribed  in  Art.  17  of  the  law  shall 
be  effected  in  the  Provinces  and  National  Territories  at  the  Post 
Office  that  the  respective  regulations  will  determine. 

AET.  25.  The  Chief  of  the  Office  of  Marks  shall  forward  to 
the  Postmasters  a  book  in  which  there  shall  be  entered  the  anno- 
tation of  applications  that  are  made  for  obtaining  certificates 
of  mark,  provided  that  those  interested  present  them  in  the  form 
and  under  the  conditions  that  the  law  prescribes. 

AET.  26.  The  books  that  are  sent  to  the  Postmasters,  as 
well  as  that  of  the  Office  of  Marks,  shall  be  foliated  and  rubri- 
cated by  the  respective  Ministry. 


ARGENTINA  5 

ART.  27.  The  Postmasters  shall  forward,  forthwith  on 
receiving  the  application,  to  the  Chief  of  the  Office  of  Marks, 
a  certified  copy  of  the  entry  thereof,  with  the  descriptions, 
designs,  and  the  evidence  of  there  having  been  paid  the  sum  that 
the  law  requires,  without  which  it  shall  not  be  despatched. 

ART.  28.  The  Chief  of  the  Office,  whenever  he  receives  an 
application  sent  by  the  Postmaster,  shall  make  an  entry  in  the 
corresponding  book,  in  which  there  shall  be  copied  what  the 
Postmaster  sends  in,  and  proceed  in  the  manner  prescribed  in 
the  preceding  articles. 

Those  interested  shall  make  the  deposit  of  the  typographic 
cliche  required  by  Art.  37,  with  the  respective  Postmasters. 

Act  of  Opposition 

ART.  29.  Opposition  to  the  concession  of  a  mark  shall  be 
made  in  the  form  prescribed  by  Arts.  19  and  25,  according  to 
the  case. 

ART.  30.  The  Chief  of  the  Office — if  he  shall  have  mediated 
waiver  of  judicial  recourse  on  the  part  of  those  interested — 
shall  render  decision  within  the  term  of  fifteen  days. 

Administrative  Appeal 

ART.  31.  In  the  cases  foreseen  in  the  preceding  article,  the 
decision  of  the  Patent  Office,  denying  or  conceding  the  owner- 
ship of  a  mark,  may  be  appealed  within  the  ten  days  following 
to  the  respective  Ministry,  which,  after  hearing  the  Attorney  of 
the  Treasury,  shall  confirm  or  reject  the  denial  or  the  concession. 

ART.  32.  If  those  interested  shall  not  have  waived  judicial 
recourse,  the  Office  shall  forward  to  the  respective  Sectional 
Court  ( Juzgado  de  Seccion)  a  certified  copy  of  the  acts  of  appli- 
cation and  opposition. 

ART.  33.  There  being  received  the  certification  to  which 
the  preceding  article  refers,  the  Judge  shall  proceed  to  try  the 
case  in  accordance  with  the  procedure  for  ordinary  actions 
at  law. 

Judicial  Appeal 

ART.  34.  Apart  from  the  cases  of  opposition  to  which  the 
preceding  articles  refer,  the  party  interested  may  institute 
judicial  appeal  within  the  term  indicated  by  Art.  31,  if  the 
decision  of  the  Patent  Office  shall  be  in  denial  of  the  registra- 
tion of  the  mark  and  if  he  shall  not  have  waived  judicial  re- 
course. 

Restitution  of  Rights 

ART.  35.  In  cases  in  which  occasion  shall  not  be  given  for 
the  concession  of  a  mark,  there  shall  be  restored  to  the  party 
interested  the  fee  collected,  in  accordance  with  Art.  17. 


6  ARGENTINA 

ART.  36.  Judicial  decisions  having  become  res  adjudicata, 
they  shall  be  notified  to  the  Office,  for  the  corresponding  effects, 
and  there  shall  be  delivered  in  opportune  time  to  the  same  Office 
the  respective  proceedings. 

Publication  of  Concessions 

ART.  37.  The  Patent  Office  shall  keep  a  book  in  which  shall 
be  entered  in  their  order  the  concessions  of  marks,  the  Chief 
thereof  being  required  every  three  months  to  deliver  to  the 
Executive  Power  a  statement  of  certificates  granted  and  of  those 
that  shall  have  been  denied,  there  being  expressed  their  respec- 
tive dates. 

Cliche  (Electrotype) 

This  statement  shall  be  published  along  with  the  engrav- 
ings of  the  corresponding  marks.  To  this  effect,  those  inter- 
ested shall  deposit  with  the  Patent  Office  a  typographic  cliche. 

Fees 

ART.  38.  For  the  registration  and  certificate  of  a  mark, 
whatever  be  its  origin,  there  shall  be  paid  a  fee  of  fifty  pesos, 
National  currency. 

For  the  registration  and  certificate  of  transfer,  there  shall 
be  paid  a  fee  of  twenty-five  pesos,  National  currency. 

For  certified  copies  of  certificates  that  shall  be  requested 
in  advance,  there  shall  be  paid  five  pesos,  National  currency, 
in  addition  to  the  value  of  the  stamped  paper  on  which  they  are 
drawn  up. 

ART.  39.  Marks  for  which  certificates  are  issued,  as  well 
as  the  applications  and  descriptions  presented,  shall  remain 
archived  in  the  Patent  Office. 

In  case  of  litigation,  there  shall  be  exhibited  to  the  compe- 
tent judge  the  design  of  the  mark  together  with  the  certified 
copy  of  the  description  thereof,  or  any  other  exhibit  concerning 
the  question. 

ART.  40.  Marks,  as  well  as  their  descriptions,  shall  be  in 
the  Office  at  the  disposition  of  all  that  desire  to  consult  them. 

ART.  41.  In  order  that  foreign  marks  may  enjoy  the 
guarantees  that  this  law  accords  they  must  be  registered  in 
accordance  with  its  prescriptions. 

The  proprietors  thereof  or  their  duly  authorized  agents 
shall  be  the  only  ones  that  may  solicit  registration. 

TITLE  II 

NAMES  OF  MANUFACTURE,  COMMERCE,  AND  AGRICULTURE 
ART.  42.    The  name  of  an  agrarian,  merchant,  or  manufac- 
turer, and  that  of  the  firm,  that  of  the  sign  or  the  designation  of 


ARGENTINA  7 

a  house  or  establishment  that  deals  in  determined  articles  or 
products,  shall  constitute  a  property,  for  the  effects  of  this  law. 

ART.  43.  Whoever  shall  desire  to  carry  on  an  industry, 
line  of  trade  or  branch  of  agriculture,  already  under  exploita- 
tion by  another  person,  with  the  same  name  or  with  the  same 
conventional  designation,  shall  adopt  a  modification  that  will 
visibly  distinguish  that  name  or  that  designation  from  the  one 
that  the  preexisting  house  or  establishment  uses. 

ART.  44.  If  the  party  injured  by  the  use  of  a  name  of 
manufacture,  of  commerce,  or  branch  of  agriculture,  does  not 
lodge  claim  within  the  term  of  one  year  from  the  day  on  which 
it  commenced  to  be  used  by  another,  his  right  shall  become 
outlawed. 

ART.  45.  Joint  stock  companies  shall  have  the  right  to  the 
name  that  they  bear,  the  same  as  any  individual,  and  they  shall 
be  subject  to  the  same  limitations. 

ART.  46.  The  right  to  the  exclusive  use  of  a  name  as  prop- 
erty shall  become  extinguished  together  with  the  commercial 
house  that  bears  it,  or  with  the  exploitation  of  the  branch  of 
industry  or  agriculture. 

ART.  47.  There  shall  not  be  necessary  the  registration  of 
the  name  for  exercising  the  rights  accorded  by  this  law,  save 
the  case  in  which  it  forms  part  of  a  mark. 

TITLE  III 

PENAL  DISPOSITIONS 

ART.  48.  They  shall  be  punished  with  a  fine  of  from  twenty 
to  five  hundred  pesos,  National  currency,  and  imprisonment  of 
from  one  month  to  one  year,  the  corporal  punishment  not  being 
possible  of  being  satisfied  by  a  money  payment: 

1)  That  counterfeit  a  mark  of  manufacture,  commerce,  or 
agriculture ; 

2)  That  use  counterfeit  marks; 

3)  That  fraudulently  imitate  a  mark; 

4)  That  knowingly  affix  to  their  products  or  to  the  effects 
of  their  commerce  a  mark  belonging  to  another  or  one  fraudu- 
lently imitated; 

5)  That  knowingly  sell,  offer  for  sale,  or  are  prepared  to 
sell,  counterfeit  marks,  and  those  that  sell  authentic  marks  with- 
out the  consent  of  their  proprietor; 

6)  That  knowingly  sell,  place  on  sale,  offer  to  sell  or  circu- 
late, articles  with  counterfeit  or  fraudulently  imitated  mark; 

7)  All  those  that  with  fraudulent  intent  place  or  cause  to 
be  placed  on  the  mark  of  a  commodity  or  product  a  statement 
or  any  other  designation  false  with  relation  whether  to  the 


8 

nature,  quality,  quantity,  number,  weight  or  measure,  or  the 
place  or  country  in  which  it  has  been  manufactured  or  shipped, 
and  to  medals,  diplomas,  mentions,  awards,  or  honorable  dis- 
tinctions obtained  in  expositions  or  fairs ; 

8)  That  knowingly  sell,  place  on  sale,  or  offer  to  sell,  goods 
or  products  bearing  any  of  the  false  statements  mentioned  in 
the  preceding  paragraph. 

In  case  of  repetition,  these  penalties  shall  be  doubled. 

ART.  49.  There  shall  be  applicable,  as  regards  the  crimes 
to  which  the  preceding  article  refers,  the  dispositions  contained 
in  Titles  V  and  VI,  Sec.  1,  Book  I,  of  the  Penal  Code,  in  the 
cases  not  forseen  by  said  article. 

ART.  50.  In  order  that  there  be  crime,  it  is  not  necessary 
that  the  falsification  or  imitation  embrace  all  the  objects  that 
were  to  be  marked,  there  sufficing  the  application  on  a  single 
object. 

ART.  51.  Simple  attempt  shall  not  be  punished,  nor  shall 
it  entail  civil  responsibility;  however,  it  shall  give  occasion  for 
the  destruction  of  the  instruments  intended  exclusively  for  the 
falsification  and  other  crimes. 

ART.  52.  The  proceeds  from  the  fines  to  which  the  law 
refers  shall  be  devoted  to  the  development  of  the  schools  of  the 
place  in  which  the  crime  was  committed,  if  there  shall  be  prop- 
erties sufficient  for  the  civil  indemnifications. 

ART.  53.  The  goods  or  products  with  a  mark  illegally 
employed  that  are  found  in  the  possession  of  the  accused  or  his 
agents  shall  be  sequestered  and  sold  following  the  destruction 
of  the  said  mark ;  their  proceeds,  after  the  payment  of  the  costs 
and  indemnifications  established  by  this  law,  shall  be  adjudi- 
cated to  the  benefit  of  the  public  schools  of  the  Province  in  which 
the  sequestration  was  made. 

ART.  54.  There  shall  likewise  be  seized:  the  counterfeit, 
imitation,  and  deceitfully  shown  marks,  as  well  as  the  instru- 
ments that  shall  have  served  particularly  for  the  commission 
of  these  crimes. 

ART.  55.  Neither  civil  nor  criminal  action  may  be  insti- 
tuted subsequent  to  the  expiration  of  three  years  from  the  com- 
mission or  the  repetition  of  the  crime,  or  after  one  year,  counted 
from  the  day  on  which  the  proprietor  of  the  mark  became  cog- 
nizant of  the  fact  for  the  first  time. 

Acts  that  interrupt  the  statute  of  limitations  are  those  that 
are  determined  by  Common  Law. 

ART.  56.  The  dispositions  contained  in  the  articles  of  the 
present  title  shall  be  applicable  to  those  that  make  use  without 
authorization  of  the  names  of  a  merchant  or  of  a  firm,  of  the 


ARGENTINA  9 

sign  or  designation  of  a  commercial  or  manufacturing  house, 
the  name  of  an  agrarian  or  establishment,  in  accordance  with 
Title  II  of  the  present  law. 

TITLE  IV 

PROCEDURE 

ART.  57.  Any  proprietor  of  a  mark  of  manufacture-,  or 
commerce,  or  agriculture,  to  whose  knowledge  there  comes  notice 
of  there  being  found  in  the  Custom  House,  Post  Office,  or  other 
Government  Bureau  or  place,  labels,  capsules,  containers  or 
any  other  object  similar  to  those  that  constitute  or  pertain  to 
his  mark,  may  appeal  to  the  competent  authority  petitioning  the 
seizure  of  said  objects,  and  the  judge  shall  concede  it  under  the 
responsibility  of  the  petitioner  and  such  bond  as  he  shall  judge 
necessary  in  case  of  the  seizure  having  been  applied  for  wrong- 
fully. 

It  will  be  optional  with  the  judge  to  dispense  with  the  bond 
when  the  petitioner  is  a  person  of  known  responsibility. 

ART.  58.  Those  that  sell  or  place  on  sale  goods  or  products 
with  a  usurped,  imitation,  or  falsified  mark,  shall  be  obliged  to 
give  to  the  merchant  or  manufacturer,  owner  thereof,  complete 
information  in  writing  respecting  the  name  and  address  of  him 
that  has  sold  or  obtained  the  merchandise,  as  well  as  with  regard 
to  the  time  at  which  the  sale  commenced  and,  in  case  of  refusal, 
they  may  be  compelled  judicially,  under  pain  of  being  consid- 
ered as  accomplices  of  the  transgressor. 

ART.  59.  Without  prejudice  to  the  provisions  of  the  pre- 
ceding article  and  of  other  rules  that  hold  in  criminal  actions, 
the  owners  of  counterfeit,  false,  or  imitation  marks  may  solicit, 
under  their  own  responsibility,  from  the  competent  judges,  that 
an  inventory  and  description  be  made  of  the  goods  or  products 
that  are  found  with  said  marks,  in  a  house  of  commerce  or  else- 
where. Said  inventory  shall  be  made  by  the  executive  official 
of  the  Court,  or  by  any  Notary  Public  that  the  party  interested 
shall  indicate ;  there  having  to  be  prepared  an  act  in  which  shall 
be  entered  the  description  in  detail  of  the  goods  or  products, 
and  which  shall  be  signed  by  the  petitioner,  if  he  be  present, 
and  the  executive  official  or  Notary,  respectively;  and  by  the 
owner  of  the  business  or  store,  or  two  witnesses  in  his  default. 

ART.  60.  When  several  inventories  are  to  be  taken  at  the 
same  time  at  different  places,  the  judge  may  commission  for  this 
purpose  any  Notary  Public,  on  nomination  of  the  petitioner, 
or  a  commissioner  of  police;  and  in  all  cases  order,  if  he  so 
deems  necessary,  that  an  expert  shall  accompany  the  executive 


10  ARGENTINA 

official  or  deputies,  to  the  end  that  he  may  assist  in  the  descrip- 
tion of  the  inventoried  goods. 

ABT.  61.  If,  during  the  making  of  the  inventory,  there  be 
given  the  information  mentioned  in  Art.  58,  it  shall  be  entered 
in  the  statement. 

ART.  62.  In  order  that  there  may  be  ordered  the  inventory 
and  seizure  of  which  the  preceding  articles  make  mention,  there 
shall  be  required  the  presentation  of  the  certificate  of  the  mark. 

ABT.  63.  Fifteen  days  having  expired  following  the  seiz- 
ure, this  latter  shall  be  without  effect  unless  the  owner  of  the 
mark  brings  corresponding  action. 

ART.  64.  In  civil  actions  that  are  lodged  in  accordance 
with  Arts.  6  and  43,  the  plaintiff  may  demand  bond  from  the 
defendant,  so  as  not  to  interrupt  him  in  the  exploitation  of  his 
business,  industry,  or  agricultural  profession,  in  case  the  second 
named  shall  wish  to  continue  using  the  mark,  name,  or  designa- 
tion, and,  in  default  of  bond,  he  may  petition  the  suspension  of 
the  exploitation  and  the  seizure  of  the  objects  belonging  thereto, 
he  himself  giving — in  his  turn — sufficient  bond,  if  it  be  requested. 

The  seizure  shall  be  made  with  all  formalities  of  law. 

ART.  65.  Actions  to  which  the  crimes  forseen  in  Art.  48  of 
this  law  give  rise,  shall  be  prosecuted  in  accordance  with  the 
procedure  prescribed  by  the  Code  of  Criminal  Procedure  of 
the  Nation. 

ART.  66.  Criminal  action  may  not  be  initiated  by  the  Gov- 
ernment, and  shall  correspond  solely  to  the  individuals  inter- 
ested; however,  once  brought,  it  may  be  continued  by  the  Office 
of  the  State  Attorney. 

The  plaintiff  may  withdraw  from  his  action  up  to  the 
moment  of  the  sentence  being  pronounced. 

ART.  67.  Those  injured  through  contravention  of  the  pre- 
cepts of  this  law  may  bring  their  action  for  damages  and  injuries 
against  the  authors  of  and  accomplices  in  the  fraud. 

Sentences  of  condemnation  shall  be  published  at  the  cost 
of  the  transgressor. 

TITLE  V 

TRANSITORY  PROVISIONS 

ART.  68.  Marks  granted  in  the  Republic  within  four 
months  following  the  sanction  of  this  law  may  be  without  effect 
if  there  be  formally  solicited  the  registration  of  a  foreign  mark, 
identical  or  susceptible  of  producing  confusion,  granted  pre- 
viously to  the  owner  of  the  same  by  competent  authority,  and 
which  may  have  been  in  use  in  the  country  before  the  sanction 
of  this  law. 


ARGENTINA  11 

ART.  69.  Questions  that  arise  as  regards  the  disposition 
of  the  preceding  article  shall  be  judicially  resolved,  unless  those 
interested,  of  common  accord,  make  waiver  thereof.  In  case  of 
waiver,  the  disposition  of  Arts.  30  and  31  shall  hold. 

ART.  70.  Registrations  of  marks  made  in  accordance  with 
the  laws  in  force  shall  remain  valid  for  the  time  yet  to  run  for 
completing  the  term  of  their  respective  concession. 

Renewal  of  concessions  shall  be  effected  in  conformity  with 
the  prescriptions  of  this  law,  preference  having  to  be  accorded 
to  the  present  owners  of  marks,  if  they  solicit  said  removal 
before  the  expiration  of  the  term  of  registration. 

ART.  71.  Laws  Nos.  787  of  August  19,  1876,  and  866  of 
September  13,  1877,  are  abrogated. 

ART.  72.    Be  it  communicated  to  the  Executive  Power. 


AUSTRALIAN  COMMONWEALTH 

TRADE  MARKS  ACT  1905-1919 
PART  I— INTRODUCTORY 

Short  Title 

1.  This  Act  may  be  cited  as  the  Trade  Marks  Act  1905-1919. 

Commencement 

2.  This  Act  shall  commence  on  a  day  to  be  fixed  by  proc- 
lamation not  less  than  four  months  after  the  passing  of  this  Act. 

Parts 

3.  This  Act  is  divided  as  follows: — 
Part  I.    Introductory. 

Part  II.    Administration. 

Division  1.  The  Minister,  the  Registrar,  and  the  Trade 
Marks  Office. 

Division  2.  The  Transfer  of  the  Administration  of  the 
State  Trade  Marks  Acts. 

Part  III.    Registrable  Trade  Marks. 

Part  IV.    Registration  of  Trade  Marks. 

Division  1.  General. 

Division  2.  Applications. 

Division  3.  Oppositions. 

Division  4.  Registration  and  Effect  of  Registration. 

Division  5.  Renewal  of  Registration. 

Part  V.    Assignment  of  Trade  Marks. 

Part  VI.    The  Register  of  Trade  Marks. 

Part  VII.     (Cancelled  by  Amendatory  Law  No.  19  of  1912.) 

Part  VIII.    The  Commonwealth  Trade  Mark. 

Part  IX.    Protection  of  Trade  Marks. 

Part  X.    Miscellaneous. 

Definitions 
4.    In  this  Act,  except  where  otherwise  clearly  intended — 

"The  Court"  means  the  High  Court  or  the  Supreme  Court 
of  the  State  in  which  the  Trade  Marks  Office  is  situate  or  a 
Justice  thereof. 

"The  Law  Officer"  means  the  Attorney-General  or  Crown 
Solicitor  of  the  Commonwealth. 

"Person"  includes  a  body  corporate  and  a  firm  and  any 
association  of  persons  bodies  corporate  or  firms. 

"The  Register"  means  the  Register  of  Trade  Marks  under 
this  Act. 

"Registered  Trade  Mark"  means  a  trade  mark  registered 


AUSTRALIAN  COMMONWEALTH  13 

under  this  Act. 

"The  Registrar"  means  the  Registrar  of  Trade  Marks. 

"State  Trade  Marks  Act"  means  any  State  Act  relating 
to  the  Registration  of  Trade  Marks. 

"This  Act"  includes  all  regulations  made  thereunder. 

"Mark"  includes  a  device,  brand,  heading,  label,  ticket, 
name,  signature,  word,  letter,  numeral,  or  any  combination 
thereof. 

"Trade  Mark"  means  a  mark  used  or  proposed  to  be  used 
upon  or  in  connexion  with  goods,  for  the  purpose  of  indicating 
that  they  are  the  goods  of  the  proprietor  of  the  trade  mark  by 
virtue  of  manufacture,  selection,  certification,  dealing  with,  or 
offering  for  sale. 

"Registrable  Trade  Mark"  means  a  trade  mark  which  is 
capable  of  registration  under  the  provisions  of  this  Act. 

"Prescribed"  means,  in  relation  to  proceedings  before  the 
Court,  prescribed  by  Rules  of  Court,  and,  in  other  cases,  pre- 
scribed by  this  Act  or  the  regulations  under  this  Act. 

Application  of  Common  Law 

5.  Subject  to  this  Act,  or  any  Act  of  the  Parliament,  the 
common  law  of  England  relating  to  trade  marks  shall,  after  the 
commencement  of  this  Act,  apply  throughout  the   Common- 
wealth. 

Provided  that  this  section  shall  not  affect  any  right,  privi- 
lege, obligation,  or  liability  acquired,  accrued,  or  incurred  under 
the  law  of  any  State  before  the  commencement  of  this  Act. 
State  Trade  Marks  Acts  to  Cease  to  Apply  to  Trade  Marks 

6.  The  State  Trade  Marks  Acts  of  each  State  shall,  on  the 
commencement  of  this  Act,  cease  to  apply  to  trade  marks  fur- 
ther than  as  follows: — 

(a)  The  State  Trade  Marks  Act  under  which  a  trade  mark 
is  registered  shall  continue  to  apply  to  that  trade  mark  so  long 
as  the  registration  under  that  Act  remains  in  force. 

(b)  Proceedings  under  a  State  Trade  Marks  Act,  pending 
at  the  commencement  of  this  Act,  may  be  continued  and  com- 
pleted under  the  State  Trade  Marks  Act. 

(c)  Applications  for  the  registration  of  trade  marks  may 
be  received  and  dealt  with  under  a  State  Trade  Marks  Act,  if 
made  by  virtue  of  some  right  acquired,  before  the  commence- 
ment of  this  Act,  in  pursuance  of  any  International  Convention 
for  the  protection  of  industrial  property. 

Registration  Under  State  Trade  Marks  Acts  to  Cease 
After  a  Certain  Period 

7.  (1)  The  registration  of  a  trade  mark  under  a  State 


14  AUSTRALIAN  COMMONWEALTH 

Trade  Marks  Act  shall  cease  either — 

(a)  at  the  expiration  of  fourteen  years  from  the  commence- 
ment of  this  Act,  or 

(b)  at  the  time  when,  under  the  State  Trade  Marks  Act, 
the  trade  mark  would,  if  after  the  commencement  of  this  Act 
no  fee  for  the  continuance  of  its  registration  were  paid,  first 
become  liable  to  removal  from  the  register, 

whichever  first  happens. 

(2)  No  fee  shall  be  receivable  nor  shall  any  act  be  done 
after  the  commencement  of  this  Act  for  the  continuance  of  the 
registration  of  a  trade  mark  under  a  State  Trade  Marks  Act. 

Trade  Marks  Registered  Under  State  Act  May  be 
Registered  Under  this  Act 

8.  (1)  The  registered  proprietor  of  a  trade  mark  properly 
registered  in  any  State  under  a  State  Trade  Marks  Act  may 
make  application  for  the  registration  of  his  Trade  Mark  under 
this  Act. 

(2)  The  application  shall,  subject  to  paragraphs  (3),  (4), 
and  (5)  of  this  section,  be  dealt  with  in  the  same  manner  as 
other  applications  for  registration  of  trade  marks. 

(3)  The  trade  mark  may  be  registered  even  if  it  does  not 
contain  the  essential  particulars  required  by  this  Act,  but  sub- 
ject, in  that  case,  to  such  conditions  and  limitations  as  to  mode 
or  place  or  period  of  user  as  the  Registrar,  Law  Officer,  or 
Court  thinks  fit  to  impose. 

(4)  Where  the  same  trade  mark  or  a  nearly  identical  trade 
mark  is  owned  or  registered  by  another  proprietor  in  any  part 
of  the  Commonwealth  in  respect  of  the  same  goods,  the  trade 
mark  may  be  registered  subject  to  such  conditions  and  limita- 
tions as  to  mode  or  place  of  user  or  otherwise  as  the  Registrar, 
Law  Officer,  or  Court  thinks  fit  to  impose  to  preserve  the  rights 
of  each  proprietor. 

(5)  Where  the  trade  mark  or  a  nearly  identical  trade  mark 
is  common  to  the  trade  in  another  State,  the  registration  under 
this  Act  shall  confer  no  exclusive  rights  in  that  State  on  the 
registered  proprietor,  and  that  State  may  be  excepted  from  the 
registration  under  this  Act. 

(6)  The  registration  of  the  trade  mark  under  a  State  Trade 
Marks  Act  shall  cease  upon  its  registration  under  this  Act. 

Unregistered  Trade  Marks  in  Use  in  States 

9.  (1)  The  unregistered  proprietor  of  a  trade  mark  in  use 
in  any  State  at  the  commencement  of  this  Act  may  make  appli- 
cation for  the  registration  of  his  trade  mark  under  this  Act. 

(2)  The  application  shall,  subject  to  paragraphs  (3),  (4), 


AUSTRALIAN  COMMONWEALTH  15 

(5),  and  (6)  of  this  section,  be  dealt  with  in  the  same  manner 
as  other  applications  for  registration  of  trade  marks. 

(3)  The  trade  mark  may  be  registered  if  it  could  have  been 
lawfully  registered  under  the  State  Trade  Marks  Act  in  force, 
at  the  commencement  of  this  Act,  in  the  State  in  which  the  trade 
mark  was  then  used,  had  an  application  for  its  registration  been 
made  before  the  commencement  of  this  Act. 

(4)  If  the  trade  mark  does  not  contain  the  essential  par- 
ticulars required  by  this  Act,  it  may  nevertheless  be  registered 
subject  to  such  conditions  and  limitations  as  to  mode  or  place, 
or  period  of  user,  as  the  Registrar,  Law  Officer,  or  Court  thinks 
fit  to  impose. 

(5)  Where  the  same  trade  mark  or  a  nearly  identical  trade 
mark  is  owned  or  registered  by  another  proprietor  in  any  part 
of  the  Commonwealth  in  respect  of  the  same  goods,  the  trade 
mark  may  be  registered  subject  to  such  conditions  and  limita- 
tions as  to  mode  or  place  or  user  or  otherwise  as  the  Registrar, 
Law  Officer,  or  Court  thinks  fit  to  impose  to  preserve  the  rights 
of  each  proprietor. 

(6)  Where  the  trade  mark,  or  a  nearly  identical  trade  mark, 
was,  at  the  commencement  of  this  Act,  common  to  the  trade  in 
another  State,  the  registration  under  this  Act  shall  confer  no 
exclusive  rights  in  that  State  on  the  registered  proprietor,  and 
that  State  may  be  excepted  from  the  registration  under  this  Act. 

Extension  of  Act  to  Papua 

9a.  (1)  On  and  after  a  date  to  be  fixed  by  proclamation, 
this  Act  shall  apply  to  the  territory  of  Papua  as  if  that  terri- 
tory were  a  part  of  the  Commonwealth. 

(2)  For  the  purpose  of  this  section — 

(a)  any  reference  in  this  Act  to  a  State  shall  be  deemed  to 
include  a  reference  to  the  Territory  of  Papua,  and 

(b)  any  reference  in  this  Act  to  a  State  Trade  Marks  Act 
shall  be  deemed  to  include  a  reference  to  the  Act  or  law  of  that 
Territory  relating  to  the  registration  of  trade  marks. 

PART  II— ADMINISTRATION 

DIVISION  1.  THE  MINISTER,  THE  REGISTRAR,  AND  THE 
TRADE  MARKS  OFFICE 

Administration 

10.  The  Minister  for  Trade  and  Customs  or  other  the  Min- 
ister for  the  time  being  administering  the  Department  of  Trade 
and  Customs  shall  be  charged  with  the  execution  of  this  Act. 

Registrar 

11.  (1)  There  shall  be  a  Registrar  of  Trade  Marks. 


16  AUSTRALIAN  COMMONWEALTH 

(2)  Until  the  Governor-General  otherwise  determines  the 
Commissioner  of  Patents  shall  be  the  Registrar  of  Trade  Marks. 

(3)  The  Governor-General  may  appoint  a  Deputy  Regis- 
trar of  Trade  Marks,  who  shall,  subject  to  the  control  of  the 
Registrar  of  Trade  Marks,  have  all  the  powers  conferred  by 
this  Act  on  the  Registrar. 

Trade  Marks  Office 

12.  For  the  purposes  of  this  Act  an  office  shall  be  estab- 
lished which  shall  be  called  the  Trade  Marks  Office,  and  a  sub- 
office  shall  be  established  in  every  State  other  than  the  State 
in  which  the  Trade  Marks  Office  is  established. 

Seal  of  Trade  Marks  Office 

13.  There  shall  be  a  seal  of  the  Trade  Marks  Office,  and 
impressions  thereof  shall  be  judicially  noticed. 

DIVISION  2.  THE  TRANSFER  OF  THE  ADMINISTRATION  OF  THE 

STATE  TRADE  MARKS  ACTS 

Transfer  of  Administration — Effect  of  Transfer  of 
Administration 

14.  On  the  commencement  of  this  Act  the  administration 
of  the  State  Trade  Marks  Acts  of  all  the  States  shall  be  trans- 
ferred to  the  Commonwealth  and  thereupon — 

(a)  the  State  Trade  Marks  Acts  of  Each  State,  shall  so  far 
as  they  have  any  relation  to  trade  marks,  cease  to  be  adminis- 
tered by  the  State,  and  shall  thereafter  be  administered  by  the 
Commonwealth  so  far  as  is  necessary  for  the  purpose  of  com- 
pleting then  pending  proceedings  and  of  giving  effect  to  then 
existing  rights,  and  the  Register  shall  collect  for  each  State 
the  fees  which  become  payable  thereunder ;  and 

(b)  all  powers  and  functions  under  any  State  Trade  Marks 
Act  vested  in  the  Governor  of  a  State  or  in  the  Governor  with 
the  advice  of  the  Executive  Council  of  a  State  or  in  any  Minis- 
ter Officer  or  authority  of  a  State  shall  vest  in  the  Governor- 
General  or  in  the  Governor-General-in-Council  or  in  the  Minis- 
ter Officer  or  authority  exercising  similar  powers  under  the 
Commonwealth  as  the  case  requires  or  as  is  prescribed ;  and 

(c)  all  records,  registers,  deeds  and  documents  of  the  Trade 
Marks  Office  of  each  State  vested  in  or  subject  to  the  control 
of  the  State  shall,  by  force  of  this  Act,  be  vested  in  and  made 
subject  to  the  control  of  the  Commonwealth. 

PART  III— REGISTRABLE  TRADE  MARKS 

Of  What  Trade  Marks  May  Consist 

15.  A  registrable  trade  mark  shall  consist  of  essential 
particulars  with  or  without  additional  matter. 


AUSTRALIAN  COMMONWEALTH  17 

Registrable  Trade  Marks 

16.  (1)  A  registrable  trade  mark  must  contain  or  consist 
of  at  least  one  of  the  following  essential  particulars: — 

(a)  The  name  of  a  company,  individual,  or  firm  repre- 
sented in  a  special  or  particular  manner; 

(b)  The  signature  of  the  applicant  for  registration  or  some 
predecessor  in  his  business; 

(c)  An  invented  word  or  invented  words; 

(d)  A  word  or  words  having  no  direct  reference  to  the 
character  or  quality  of  the  goods,  and  not  being  according  to 
its  ordinary  signification  a  geographical  name  or  surname; 

(e)  Any  other  distinctive  mark,  but  a  name,  signature,  or 
word  or  words,  other  than  such  as  fall  within  the  descriptions 
in  the  above  paragraphs  (a),  (b),  (c)  and  (d)  shall  not,  except 
by  order  of  the  Registrar,  Law  Officer  or  Court,  be  deemed  a 
distinctive  mark. 

(2)  For  the  purpose  of  this  section  "distinctive"  means 
adapted  to  distinguish  the  goods  of  the  proprietor  of  the  trade 
mark  from  those  of  other  persons. 

(3)  In  determining  whether  a  trade  mark  is  so  adapted, 
the  Registrar,  Law  Officer,  or  Court  may,  in  the  case  of  a  trade 
mark  in  actual  use,  take  into  consideration  the  extent  to  which 
such  user  has  rendered  such  trade  mark  in  fact  distinctive  for 
the  goods  with  respect  to  which  it  is  registered  or  proposed  to 
be  registered. 

17.  (Repealed  by  Amendatory  Law  No.  19  of  1912.) 
Restriction  on  Use  of  Certain  Words  in  Trade  Marks 

18.  Subject  to  the  regulations,  the  Registrar  may  refuse 
to  register  any  trade  mark  which  contains  any  of  the  following 
words  or  matters: — 

(a)  The  words  "Patent,"  "Patented,"  "By  Royal  Letters 
Patent,"  "Registered,"  "Registered  Design,"  "Copyright," 
"Entered  at  Stationers  Hall,"  "To  counterfeit  this  is  For- 
gery, ' '  or  words  to  the  like  effect ;  or 

(b)  The  word  "Royal,"  or  any  word  of  similar  import,  if 
the  use  of  the  word  in  the  trade  mark  might  lead  people  to  think 
that  the  applicant  had  Royal  or  Government  patronage,   or 
authorization;  or 

(c)  Any  representation  of  the  King,  the  Queen,  or  any 
member  of  the  Royal  Family;  or 

(d)  Any  representation  of  the  Royal  arms,  or  Royal  crests, 
or  arms  or  crests  so  nearly  resembling  them  as  to  be  likely  to 
lead  to  mistake,  or  of  the  Royal  Crowns,  or  of  the  British 
National  Flags;  or 

(e)  Any  representation  of  the  arms,  flag,  or  seal  of  the 


18  AUSTRALIAN  COMMONWEALTH 

Commonwealth  or  of  any  State;  or 

(f)  Any  representation  of  the  arms  of  any  foreign  State 
or  country;  or 

(g)  Any  representation  of  the  arms  or  emblems  of  any  city 
or  town  in  the  Commonwealth,  or  of  any  Commonwealth  or 
State  public  authority  or  public  institution;  or 

(h)  Any  word  or  mark  which  is  declared  by  the  Governor- 
General  by  proclamation  to  be  for  the  purposes  of  this  section 
a  prohibited  word  or  mark,  or  any  word  or  mark  so  nearly 
resembling  any  such  word  or  mark  as  to  be  likely  to  deceive. 

19.  (Repealed  by  Amendatory  Law  No.  19  of  1912.) 

20.  (Repealed  by  Amendatory  Law  No.  19  of  1912.) 

Coloured  Trade  Marks 

21.  A  trade  mark  may  be  limited  in  whole  or  in  part  to  a 
particular  colour  or  colours,  and  in  case  of  any  application  for 
the  registration  of  a  trade  mark  the  fact  that  the  trade  mark 
is  so  limited  shall  be  taken  into  consideration  by  any  tribunal 
in  determining  whether  it  is  distinctive  or  not.    If  a  trade  mark 
is  registered  without  limitation  of  colour  it  shall  be  deemed  to 
be  registered  for  all  colours. 

Standardisation,  Etc.,  Trade  Marks 

22.  (1)  Where  any  Commonwealth  or  State  authority,  or 
any  association  or  person,  undertakes  the  examination  of  any 
goods  in  respect  of  origin,  material,  mode  or  conditions  of  manu- 
facture, quality,  accuracy,  or  other  characteristic,  and  certifies 
the  result  of  such  examination  by  a  mark  used  upon  or  in  con- 
nexion with  such  goods,  the  Minister  may,  if  he  judges  it  to 
be  to  the  public  advantage,  permit  the  authority,  association 
or  person  to  register  the  mark  as  a  trade  mark  in  respect  of 
such  goods,  whether  the  authority,  association  or  person  is  or 
is  not  a  trader,  or  is  or  is  not  possessed  of  a  goodwill  in  con- 
nexion with  such  examination  and  certifying. 

(2)  When  registered,  the  trade  mark  shall  be  deemed  in 
all  respects  to  be  a  registered  trade  mark,  and  the  authority, 
association  or  person  to  be  the  registered  proprietor  thereof, 
save  that  the  trade  mark  shall  not  be  transmissible  or  assign- 
able except  with  the  permission  of  the  Minister. 

(3)  This  section  shall  as  to  conditions   of  manufacture 
apply  to  Commonwealth  and  State  authorities  only. 

PART  IV— REGISTRATION  OF  TRADE  MARKS 

DIVISION  1.  GENERAL 
Trade  Mark  Must  be  for  Particular  Goods 

23.  A  trade  mark  must  be  registered  in  respect  of  par- 


AUSTRALIAN  COMMONWEALTH  19 

ticular  goods  or  classes  of  goods  as  prescribed. 

Disclaimers 

24.  (1)  If  a  trade  mark — 

(a)  contains  parts  not  separately  registered  by  the  pro- 
prietor as  trade  marks,  or 

(b)  contains  matter  common  to  the  trade  or  otherwise  of 
a  non-distinctive  character, 

the  Registrar  or  the  Law  Officer  or  the  Court,  in  deciding 
whether  the  trade  mark  shall  be  entered  or  shall  remain  upon 
the  register,  may  in  his  or  its  discretion  require,  as  a  condition 
of  its  being  upon  the  register,  that  the  proprietor  shall  disclaim 
any  right  to  the  exclusive  use  of  any  of  those  parts,  or  of  that 
matter,  to  the  exclusive  use  of  which  they  hold  him  not  to  be 
entitled,  or  that  he  shall  make  such  other  disclaimer  as  they 
think  needful  for  the  purpose  of  defining  his  rights  under  the 
registration. 

Provided  always  that  no  such  disclaimer  shall  affect  any 
rights  of  the  proprietor  of  the  trade  mark  except  such  as  depend 
upon  its  registration. 

What  Matters  Deemed  Common  to  Trade 

(2)  The  fact  that  a  mark  or  matter  therein  is  publicly  and 
honestly  used  by  more  than  three  several  persons  in  any  one 
State  as  a  mark  on  or  in  connexion  with  similar  goods  shall  be 
treated  as  conclusive  evidence  that  it  is  common  to  the  trade. 

Identical  Marks 

25.  Subject  to  this  Act,  the  Registrar  shall  not  register  in 
respect  of  goods  a  trade  mark  identical  with  one  belonging  to  a 
different  proprietor  which  is  already  on  the  register  in  respect 
of  the  same  goods  or  description  of  goods,  or  so  nearly  resem- 
bling such  a  trade  mark  as  to  be  likely  to  deceive. 

Names,  Etc.,  of  Living  Persons 

26.  Where  the  name  or  a  representation  of  a  living  person 
or  a  person  believed  by  the  Registrar  to  be  living  appears  on  a 
trade  mark,  the  Registrar  may  require  the  applicant  to  furnish 
him  with  the  consent  of  that  person  to  the  name  or  representa- 
tion appearing  on  the  trade  mark  before  he  proceeds  with  the 
registration  of  the  trade  mark. 

Rival  Claims  to  Identical  Marks 

27.  Where  each  of  several  persons  claims  to  be  proprietor 
of  the  same  trade  mark,  or  of  nearly  identical  trade  marks  in 
respect  of  the  same  goods  or  description  of  goods,  and  to  be 
registered  as  such  proprietor,  the  Registrar  may  refuse  to  reg- 
ister any  of  them  until  their  rights  have  been  determined  by 
the  Court,  or  have  been  settled  by  agreement  in  a  manner 


20  AUSTRALIAN  COMMONWEALTH 

approved  by  Mm  or  (on  appeal)  by  the  Law  Officer  or  the  Court. 

Concurrent  User 

28.  In  case  of  honest  concurrent  user  or  of  special  circum- 
stances the  Registrar,  Law  Officer,  or  the  Court  may,  in  his  or 
its  discretion,  permit  the  registration  of  the  same  trade  mark 
or  of  nearly  identical  trade  marks  for  the  same  goods  or  descrip- 
tion of  goods  by  more  than  one  proprietor,  subject  to  such  con- 
ditions and  limitations  as  to  mode  or  place  of  user  or  otherwise 
as  he  or  it  thinks  fit  to  impose. 

Associated  Trade  Marks 

29.  (1)  Where  application  is  made  for  the  registration  of 
a  trade  mark  so  nearly  resembling  a  trade  mark  of  the  applicant 
which  is  already  on  the  register  as  to  be  likely  to  deceive  or 
cause  confusion  if  used  by  a  person  other  than  the  applicant, 
the  Registrar  may  require  as  a  condition  of  registration  that 
the  trade  marks  shall  be  entered  on  the  register  as  associated 
trade  marks. 

(2)  If  the  proprietor  of  a  trade  mark  claims  to  be  entitled 
to  the  exclusive  use  of  any  part  of  it  separately  he  may,  if  the 
part  satisfies  all  the  conditions  of  a  trade  mark,  register  it  as 
a  separate  trade  mark. 

(3)  When  a  part  of  a  registered  trade  mark  is  registered 
separately,  it  and  the  trade  mark  of  which  it  forms  a  part  shall 
be  deemed  to  be  associated  trade  marks,  and  shall  be  entered 
on  the  register  as  such,  and  the  user  of  the  whole  trade  mark 
shall  for  the  purposes  of  this  Act  be  deemed  to  be  also  a  user 
of  the  part  separately  registered  as  a  trade  mark. 

(4)  Except  for  the  purpose  of  assignment  or  transmission, 
and  subject  to  the  provisions  of  this  Act  as  to  use  of  associated 
trade  marks,  associated  trade  marks  shall  be  deemed  to  be 
registered  independently. 

User  of  Associated  Trade  Marks 

30.  Where  under  the  provisions  of  this  Act  user  of  a 
registered  trade  mark  is  required  to  be  proved  for  any  purpose, 
the  Registrar,  Law  Officer,  or  the  Court,  as  the  case  may  be, 
may,  if  and  so  far  as  he  or  it  thinks  fit,  accept  user  of  an  asso- 
ciated registered  trade  mark  or  of  the  trade  mark  with  addi- 
tions or  alterations  not  substantially  affecting  its  identity  as  an 
equivalent  for  the  user  of  the  first-mentioned  trade  mark. 

Series  of  Trade  Marks 

31.  When  a  person  claiming  to  be  the  proprietor  of  several 
trade  marks  for  the  same  description  of  goods  which,  while 
resembling  each  other  in  the  material  particulars  thereof,  yet 
differ  in  respect  of — 


AUSTRALIAN  COMMONWEALTH  21 

(a)  statements  of  the  goods  for  which  they  are  respectively 
used  or  proposed  to  be  used;  or 

(b)  statements   of  number,   price,   quality,   or   names   of 
places;  or 

(c)  other  matter  of  a  non-distinctive  character  which  does 
not  substantially  affect  the  identity  of  the  trade  mark;  or 

(d)  colour, 

seeks  to  register  such  trade  marks,  they  may  be  registered  as  a 
series  in  one  registration.  All  the  trade  marks  in  a  series  of 
trade  marks  so  registered  shall  be  deemed  to  be,  and  shall  be 
registered  as,  associated  trade  marks. 

DIVISION  2.  APPLICATIONS 
Who  May  Apply  for  Registration 

32.  (1)  Any  person,  claiming  to  be  the  proprietor  of  a 
trade  mark,  may  make  application  to  the  Registrar  for  the  regis- 
tration of  his  trade  mark. 

Form  of  Application 

(2)  The  application  must  be  made  in  the  form  prescribed 
and  must — 

(a)  specify  the  goods  or  class  of  goods  in  respect  of  which 
the  applicant  desires  the  trade  mark  to  be  registered;  and 

(b)  (Repealed  by  Amendatory  Law  No.  19  of  1912.) 

(c)  state  an  address  within  the  Commonwealth  as  an  ad- 
dress for  service. 

(3)  Separate  applications  must  be  made  for  the  registra- 
tion of  a  trade  mark  in  respect  of  each  class  of  goods  in  respect 
of  which  the  applicant  desires  it  to  be  registered. 

Lodging  of  Application 

33.  (1)  Every  application  must  be  lodged  by  being  left  at 
or  sent  by  post  to  the  Trade  Marks  Office  or  a  sub-office. 

(2)  Such  application  shall  be  forthwith  referred  by  the  Reg- 
istrar to  an  examiner,  who  shall  ascertain  and  report  whether 
the  trade  mark  is  a  registrable  trade  mark,  and  whether  it  is 
identical  with  a  trade  mark  already  on  the  Register  under  this 
Act  or  any  State  Trade  Marks  Act  in  respect  of  the  same  goods 
or  description  of  goods,  or  so  nearly  resembles  the  latter  trade 
mark  as  to  be  likely  to  deceive,  and  whether  the  trade  mark  or 
any  matter  therein  is  common  to  the  trade. 

(3)  Subject  to  this  Act  the  Registrar  may  either  accept  the 
application,  with  or  without  modifications  or  conditions,  or  re- 
fuse it. 

Appeal 

34.  (1)  An  appeal  shall  lie  to  the  Law  Officer  from  any 
conditional  acceptance  or  any  refusal  by  the  Registrar  of  the 


22  AUSTRALIAN  COMMONWEALTH 

application. 

(2)  The  Law  Officer  shall  hear  the  applicant  and  the  Regis- 
trar, and  shall  decide  whether  and  subject  to  what  conditions 
or  modifications  (if  any)  the  application  shall  be  accepted. 

Appeal  to  Court 

(3)  An  applicant  aggrieved  by  the  decision  of  the  Law 
Officer  may  in  the  time  and  in  the  manner  prescribed  appeal  to 
the  Court. 

(4)  The  Court  shall  hear  the  applicant  and  determine 
whether  the  application  ought  to  be  refused  or  ought  to  be 
accepted  with  or  without  any  modification  or  conditions. 

Direct  Appeal  by  Consent  from  Registrar  to  Court 

35.  If  the  applicant  so  desires,  he  may  appeal  direct  from 
the  Registrar  to  the  Court  without  any  appeal  to  the  Law  Officer. 

Advertisement 

36.  If  the  application  is  accepted  with  or  without  condi- 
tions or  modifications,  it  shall  forthwith  be  advertised  in  the 
prescribed  manner. 

Limit  of  Time  for  Proceeding  with  Application 

37.  If,  by  reason  of  default  on  the  part  of  the  applicant, 
the  registration  of  a  trade  mark  has  not  been  completed  within 
twelve  months  from  the  date  of  the  lodging  of  the  application, 
the  Registrar  shall  give  notice  of  the  non-completion  to  the  ap- 
plicant, and  if,  at  the  expiration  of  fourteen  days  from  that 
notice  or  such  further  time  as  the  Registrar  in  special  cases 
permits,  the  registration  is  not  completed,  the  application  shall 
be  deemed  to  be  abandoned. 

DIVISION  3 — OPPOSITION 
Notice  of  Opposition 

38.  Any  person  may,  within  three  months  after  the  adver- 
tisement of  the  application  or  such  further  time  not  exceeding 
three  months  as  the  Registrar  on  application  made  within  the 
first  period  of  three  months  allows,  lodge  at  the  Trade  Marks 
Office  a  notice  of  opposition  in  duplicate  to  the  registration  of 
the  trade  mark,  setting  out  the  grounds  on  which  he  relies  to 
support  his  notice. 

Address  for  Service 

39.  Every  notice  of  opposition  shall  state  an  address  in 
Australia  as  an  address  for  service. 

Notice  to  Applicant 

40.  The  Registrar  shall  send  a  duplicate  of  the  notice  of 
opposition  to  the  applicant. 

Counter-statement  by  Applicant 

41.  (1)  Within  three  months  after  the  lodging  of  notice 


AUSTRALIAN  COMMONWEALTH  23 

of  opposition  or  such  further  time  not  exceeding  three  months 
as  the  Registrar  on  application  made  within  such  first  men- 
tioned three  months  allows,  the  applicant  may  lodge  at  the  Trade 
Marks  Office  a  counter-statement  in  duplicate,  setting  out  the 
grounds  on  which  he  relies  to  support  his  application. 

Failure  to  Lodge  Counter-statement 

(2)  If  the  applicant  fails  to  so  lodge  a  counter-statement 
he  shall  be  deemed  to  have  abandoned  his  application. 

Service  of  Counter-statement 

(3)  The  Registrar  shall  send  a  duplicate  of  the  counter- 
statement  to  the  opponent. 

Day  of  Hearing 

42.  (1)  The  Registrar  shall  fix  a  day  for  the  hearing  of 
the  application,  and  shall  give  notice  thereof  to  the  applicant 
and  to  the  opponent. 

Hearing 

(2)  On  the  day  so  fixed,  or  on  any  other  day  to  which  the 
hearing  is  adjourned,  the  Registrar  shall  hear  the  applicant  and 
the  opponent,  and  shall  decide  whether  the  application  is  to  be 
refused  or  whether  it  is  to  be  granted  either  with  or  without 
any  modifications  or  conditions. 

Appeal  to  Law  Officer 

43.  (1)  Any  party  aggrieved  by  the  decision  of  the  Regis- 
trar may  in  the  time  and  in  the  manner  prescribed  appeal  to 
the  Law  Officer. 

(2)  The  Law  Officer  shall  hear  the  applicant  and  the  oppo- 
nent, and  may  determine  whether  the  application  ought  to  be 
refused  or  ought  to  be  granted  with  or  without  any  modifica- 
tions or  conditions. 

Appeal  to  Court 

44.  (1)  Any  party  aggrieved  by  the  decision  of  the  Law 
Officer  may  in  the  time  and  in  the  manner  prescribed  appeal  to 
the  Court. 

(2)  The  Court  shall  hear  the  applicant  and  the  opponent, 
and  determine  whether  the  application  ought  to  be  refused  or 
ought  to  be  granted  with  or  without  any  modifications  or  con- 
ditions. 

Direct  Appeal  from  Registrar  to  Court 

45.  If  either  party  so  desires  and  gives  written  notice 
thereof  the  appeal  shall  be  taken  direct  from  the  Registrar  to 
the  Court  without  any  appeal  to  the  Law  Officer. 

Security  for  Costs 

46.  If  a  person  giving  notice  of  opposition  or  appeal  does 
not  reside  in  Australia,  the  Registrar,  Law  Officer,  or  the  Court 


24  AUSTRALIAN  COMMONWEALTH 

may  order  him  to  give  security  for  costs,  and  if  the  order  is  not 
complied  with,  the  opposition  or  appeal  shall  be  deemed  to  be 
abandoned. 

DIVISION  4 — REGISTRATION  AND  EFFECT  OF  REGISTRATION 
Date  of  Registration 

47.  When  an  application  for  registration  has  been  ac- 
cepted and  has  not  been  opposed,  and  the  time  for  notice  of 
opposition  has   expired,   or  has  been  opposed  and  has  been 
granted,  the  Registrar,  unless  otherwise  prescribed  by  the  regu- 
lations, shall  register  the  trade  mark  as  on  the  date  of  the  lodg- 
ing of  the  application,  which  date  shall  be  deemed  to  be  the 
date  of  registration,  and  shall  issue  to  the  applicant  a  certificate 
of  registration  of  the  trade  mark  in  the  prescribed  form. 

Duration  of  Registration 

48.  The  registration  of  a  trade  mark  shall  be  for  a  period 
of  fourteen  years,  but  may  be  renewed  from  time  to  time  in 
accordance  with  the  provisions  of  this  Act. 

Rights  of  Registered  Proprietor 

49.  (1)  Subject  to  this  Act  the  person  for  the  time  being 
entered  in  the  register  as  proprietor  of  a  trade  mark  shall,  sub- 
ject to  any  rights  appearing  from  the  register  to  be  vested  in 
any  other  person,  have  power  to  assign  the  trade  mark,  and  to 
give  effectual  receipts  for  any  consideration  for  such  assign- 
ment. 

(2)  (Repealed  by  Amendatory  Law  No.  19  of  1912.) 

(3)  Any  equities  in  respect  of  a  trade  mark  may  be  en- 
forced in  like  manner  as  in  respect  of  any  other  personal 
property. 

Rights  of  Registered  Proprietor 

50.  Subject  to  the  provision  of  section  fifty-one   [A]    of 
this    Act,    and    to    any    limitations    and    conditions    entered 
upon  the  register,  the  registration  of  a  person  as  proprietor  of 
a  trade  mark  shall,  if  valid,  give  to  such  person  the  exclusive 
right  to  the  use  of  the  trade  mark  upon  or  in  connexion  with 
the  goods  in  respect  of  which  it  is  registered : 

Provided  that  where  two  or  more  persons  are  registered 
proprietors  of  the  same  (or  substantially  the  same)  trade  mark 
in  respect  of  the  same  goods,  no  rights  of  exclusive  user  of  such 
trade  mark  shall  (except  so  far  as  their  respective  rights  have 
been  defined  by  the  Registrar,  the  Law  Officer,  or  the  Court) 
be  acquired  by  any  one  of  such  persons  as  against  any  other  by 
the  registration  thereof,  but  each  of  such  persons  shall  other- 
wise have  the  same  rights  as  if  he  were  the  sole  registered  pro- 
prietor thereof. 


AUSTRALIAN  COMMONWEALTH  25 

Registration  Prima  Facie  Evidence  of  Validity 

51.  In  all  legal  proceedings  relating  to  a  registered  trade 
mark  (including  applications  under  section  seventy-one  of  this 
Act)  the  fact  that  a  person  is  registered  as  proprietor  of  the 
trade  mark  shall  be  prima  facie  evidence  of  the  validity  of  the 
original  registration  of  the  trade  mark  under  this  Act  and  of 
all  subsequent  assignments  and  transmissions  of  the  trade  mark. 

Registration  Conclusive  After  Seven  Years 
5lA.  In  all  legal  proceedings  relating  to  a  registered  trade 
mark  (including  applications  under  section  seventy-one  of  this 
Act)  the  original  registration  of  the  trade  mark  under  this  Act 
shall,  after  the  expiration  of  seven  years  from  the  date  of  the 
original  registration,  be  taken  to  be  valid  in  all  respects,  unless 
the  original  registration  was  obtained  by  fraud,  or  unless  the 
trade  mark  offends  against  the  provisions  of  section  one  hun- 
dred and  fourteen  of  this  Act: 

Provided  that  nothing  in  this  Act  shall  entitle  the  proprie- 
tor of  a  registered  trade  mark  to  interfere  with  or  restrain  the 
user  by  any  person  of  a  similar  trade  mark  upon  or  in  con- 
nexion with  goods  upon  or  in  connexion  with  which  such  person 
has,  by  himself  or  his  predecessors  in  business,  continuously 
used  the  trade  mark  from  a  date  anterior  to  the  user  of  the  first 
mentioned  trade  mark  by  the  proprietor  thereof  or  his  predeces- 
sors in  business  or  to  object  (on  such  user  being  proved)  to 
such  person  being  put  upon  the  register  for  such  similar  trade 
mark  in  respect  of  such  goods  under  the  provisions  of  sections 
eight,  nine,  or  twenty-eight  of  this  Act. 

Unregistered  Trade  Mark 

52.  No  person  shall  be  entitled  to  institute  any  proceed- 
ing to  prevent  or  recover  damages  for  the  infringement  of  a 
trade  mark,  unless  in  the  case  of  a  registrable  trade  mark  it  is 
registered  under  this  Act  or  a  State  Trade  Marks  Act. 

Infringement 

53.  The  rights  acquired  by  registration  of  a  trade  mark 
shall  be  deemed  to  be  infringed  by  the  use,  in  respect  of  the 
goods  in  respect  of  which  it  is  registered,  of  a  mark  substan- 
tially identical  with  the  trade  mark  or  so  nearly  resembling  it 
as  to  be  likely  to  deceive. 

In  an  action  for  the  infringement  of  a  trade  mark,  the  Court 
in  trying  the  question  of  infringement  shall  admit  evidence  of 
the  usages  of  the  trade  mark  in  respect  to  the  get-up  of  those 
goods  and  of  any  trade  marks  or  get-up  legitimately  used  in 
respect  of  them  by  other  persons. 


26  AUSTRALIAN  COMMONWEALTH 

User  of  Name,  Address,  or  Description  of  Goods 
53A.  No  registration  under  this  Act  shall  interfere  with 
any  bona  fide  use  by  a  person  of  his  own  name  or  place  of  busi- 
ness or  that  of  any  of  his  predecessors  in  business,  or  the  use 
by  any  person  of  any  bona  fide  description  of  the  character  or 
quality  of  his  goods. 

"Passing-Off"  Action 

53s.    Nothing  in  this  Act  shall  be  deemed  to  affect  rights  of 
action  against  any  person  for  passing  off  goods  as  those  of 
another  person  or  the  remedies  in  respect  thereof. 
DIVISION  5 — RENEWAL  OF  REGISTRATION 
Renewal  of  Registration 

54.  The  Registrar  may,  on  application  made  by  the  regis- 
tered proprietor  of  a  trade  mark  in  the  prescribed  manner,  at 
any  date  not  later  than  fourteen  years  from  the  date  of  the 
original  registration  or  the  last  renewal  of  registration,  as  the 
case  may  be  (in  this  Division  termed  "the  date  of  the  last  regis- 
tration"), renew  the  registration  of  the  trade  mark  for  a  period 
of  fourteen  years  from  the  date  of  the  expiry  of  the  period  of 
the  last  registration. 

Procedure  on  Expiry  of  Period  of  Registration 

55.  At  the  prescribed  time  before  the  expiration  of  four- 
teen years  from  the  date  of  the  last  registration  of  a  trade  mark, 
the  Registrar  shall  send  notice  in  the  prescribed  manner  to  the 
registered  proprietor  or  his  agent  in  Australia  of  the  date  at 
which  the  existing  registration  will  expire  and  the  conditions 
as  to  proof  of  substantial  user  and  as  to  payment  of  fees  and 
otherwise  upon  which  a  renewal  of  such  registration  may  be 
obtained,  and  if  at  the  expiration  of  the  time  prescribed  in  that 
behalf  those  conditions  have  not  been  duly  complied  with,  the 
Registrar  may  remove  the  trade  mark  from  the  register,  but 
any  party  aggrieved  shall  have  a  right  to  appeal  in  manner 
prescribed. 

Restoration  of  Trade  Mark  Removed  for  Non-Payment  of 

Renewal  Fee 

56.  Where  a  trade  mark  has  been  removed  from  the  regis- 
ter for  non-payment  of  the  prescribed  fee,  the  Registrar  may 
within  three  months  from  such  removal,  if  satisfied  that  it  is 
just  so  to  do,  restore  such  trade  mark  to  the  register  on  pay- 
ment of  the  prescribed  additional  fee  for  renewal. 

Status  of  Unrenewed  Trade  Mark 

57.  Where  a  trade  mark  has  been  removed  from  the  regis- 
ter for  non-payment  of  the  fee  for  the  renewal,  it  shall,  never- 
theless, for  the  purpose  of  any  application  for  registration  dur- 


AUSTRALIAN  COMMONWEALTH  27 

ing  one  year  next  after  the  date  of  removal,  be  deemed  to  be  a 
trade  mark  which  is  already  registered,  unless  it  is  shown  to 
the  satisfaction  of  the  Registrar  that  the  non-payment  of  the 
fee  arises  from  the  death  or  bankruptcy  or  liquidation  of  the 
proprietor  of  the  trade  mark,  or  from  his  having  ceased  to  carry 
on  business,  and  that  no  person  claiming  under  that  proprietor 
or  under  his  bankruptcy  is  using  the  trade  mark. 

PART  V— ASSIGNMENT  OF  TRADE  MARKS 

Assignment  and  Transmission  of  Trade  Marks 

58.  A  trade  mark  when  registered  may  be  assigned  and 
transmitted  only  in  connexion  with  the  goodwill  of  the  business 
concerned  in  the  particular  goods  or  class  of  goods  in  respect 
of  which  it  has  been  registered  and  shall  be  determinable  with 
that  goodwill. 

Apportionment  of  Marks  on  Dissolution  of  Partnership 

59.  (1)  In  any  case  where  by  reason  of  dissolution  of 
partnership  or  other  cause  a  person  ceases  to  carry  on  busi- 
ness, and  the  goodwill  of  the  person  does  not  pass  to  one  suc- 
cessor but  is  divided,  the  Registrar  may  (subject  to  the  pro- 
visions of  this  Act  as  to  associated  trade  marks  and  series  of 
trade  marks),  on  the  application  of  any  of  the  parties  interested, 
permit  an  apportionment  of  the  registered  trade  marks  of  the 
person  among  the  persons  in  fact  continuing  the  business,  sub- 
ject to  such  conditions  and  modifications  as  he  thinks  necessary 
in  the  public  interest. 

(2)  An  appeal  shall  lie  to  the  Law  Officer  or,  by  leave  of 
the  Law  Officer,  to  the  Court  from  any  decision  of  the  Registrar 
under  this  section. 

Assignment  of  Associated  Trade  Marks 

60.  Associated  trade  marks  may  be  assigned  or  transmit- 
ted only  as  a  whole. 

PART  VI— THE  REGISTER  OF  TRADE  MARKS 

Register  of  Trade  Marks 

61.  There  shall  be  kept  at  the  Trade  Marks  Office  a  Regis- 
ter of  Trade  Marks,  wherein  shall  be  entered  particulars  of — 

(a)  all  registered  trade  marks,  with  the  names  and  ad- 
dresses of  their  proprietors,  together  with  the  date  of  registra- 
tion and  expiry  thereof ; 

(b)  notifications  of  assignments  and  transmissions,  and  dis- 
claimers ;  and 

(c)  any  other  matters  relating  to  registered  trade  marks 
which  are  prescribed. 


28  AUSTRALIAN  COMMONWEALTH 

Notification  of  Assignments  and  Transmissions 

62.  Where  a  trade  mark  has  been  lawfully  assigned  or 
transmitted,  a  notification  of  the  assignment  or  transmission, 
in  the  form  and  authenticated  in  the  manner  prescribed,  may 
be  given  to  the  Registrar,  who  shall  thereupon  register  the 
assignment. 

Trusts  Not  to  be  Noticed 

63.  No  notice  of  any  trust,  expressed,  implied  or  construc- 
tive, shall  be  entered  in  the  register,  or  be  received  by  the 
Registrar. 

Inspection  of  Register 

64.  The  register  shall  be  open  to  the  inspection  of  the 
public  at  all  convenient  times,  on  payment  of  the  prescribed  fee. 

Certified  Copies  to  be  Supplied 

65.  Certified  copies  of  entries  in  the  register   shall  be 
given  to  any  person  applying  for  them  on  payment  of  the  pre- 
scribed fee. 

Certified  Copies  Evidence 

66.  Documents  purporting  to  be  copies  of  or  extracts  from 
the  register  and  to  be  certified  by  the  Registrar  and  sealed  with 
the  seal  of  the  Trade  Marks  Office,  shall  be  admitted  in  evi- 
dence in  all  Federal  and  State  Courts  without  further  proof 
or  production  of  the  originals. 

False  Entries  in  Register 

67.  No  person  shall  wilfully — 

(a)  Make  any  false  entry  in  the  register;  or 

(b)  Make  any  writing  falsely  purporting  to  be  a  copy  of 
an  entry  in  the  register;  or 

(c)  Produce  or  tender  in  evidence  any  writing  falsely  pur- 
porting to  be  a  copy  of  an  entry  in  the  register. 

Penalty:   Three  years'  imprisonment. 
Correction  of  Register 

68.  (1)  The  Registrar  may,  on  request  made  in  the  pre- 
scribed manner  by  the  registered  proprietor  of  a  trade  mark, 
or  by  some  person  entitled  by  law  to  act  in  his  name,  amend  or 
alter  the  register  by — 

.  .  (a)  correcting  any  error  in  the  name  or  address  of  the  reg- 
istered proprietor  of  the  trade  mark;  or 

(b)  altering  the  name  or  address  of  the  registered  proprie- 
tor who  has  changed  his  name  or  address ;  or 

(c)  cancelling  the  registration  of  the  trade  mark;  or 

(d)  striking  out  any  goods  or  classes  of  goods  from  those 
in  respect  of  which  the  trade  mark  is  registered ;  or 

(e)  entering  a  disclaimer  or  memorandum  relating  to  the 


AUSTRALIAN  COMMONWEALTH  29 

trade  mark  which  does  not  in  any  way  extend  the  rights  given 
by  the  registration  of  the  trade  mark. 

(2)  Where  the  register  has  been  amended  or  altered  under 
this  section,  the  Registrar  may — 

(a)  cancel  the  certificate  of  registration  of  the  trade  mark, 
and  issue  a  new  certificate  of  registration;  or 

(b)  make  such  amendments  or  alterations  in  the  certificate 
of  registration  of  the  trade  mark  as  are  rendered  necessary  by 
the  amendment  or  alteration  of  the  register. 

Registration  of  Assignments,  etc. 

69.  Subject  to  the  provisions  of  this  Act,  where  a  person 
becomes  entitled  to  a  registered  trade  mark  by  assignment, 
transmission,   or   otherwise,   the   Registrar   shall,   on  request 
and  on  proof  of  title  to  his  satisfaction,  cause  the  name  and 
address  of  the  person  to  be  entered  on  the  register  as  proprietor 
of  the  trade  mark. 

Alteration  of  registered  trade  mark 

70.  (1)  The  registered  proprietor  of  any  trade  mark  may 
apply  in  the  prescribed  manner  to  the  Registrar  for  leave  to 
add  to  or  alter  the  trade  mark  in  any  manner  not  substantially 
affecting  its  identity,  and  the  Registrar  may  refuse  the  leave 
or  may  grant  it  on  such  terms  as  he  thinks  fit,  but  any  refusal 
or  conditional  permission  shall  be  subject  to  appeal  to  the  Law 
Officer. 

(2)  If  leave  to  add  or  to  alter  the  trade  mark  is  granted, 
the  trade  mark  as  altered  shall  be  advertised  in  the  prescribed 
manner. 

Rectification  of  Register  by  Court 

71.  (1)  Subject  to  this  Act,  the  Court,  on  the  application 
of  any  person  aggrieved  or  of  the  Registrar,  may  order  the 
rectification  of  the  register  by — 

(a)  the  making  of  any  entry  wrongly  omitted  to  be  made 
in  the  register;  or 

(b)  the  expunging  of  any  entry  wrongly  made  in  or  re- 
maining on  the  register;  or 

(c)  the  insertion  in  the  register  of  any  exception  or  limita- 
tion affecting  the  registration  of  a  trade  mark  which  in  the 
opinion  of  the  Court  ought  to  be  inserted ;  or 

(d)  the  correction  of  any  error  or  defect  in  the  register. 

(2)  The  Registrar  shall  only  make  application  to  the  Court 
under  this  section  in  cases  where  he  thinks  the  application  neces- 
sary or  desirable  in  the  public  interest. 

(3)  Notice  of  every  application  to  the  Court  pursuant  to 
this  section  (other  than  an  application  by  the  Registrar)  shall 
be  given  to  the  Registrar,  who  may  be  heard  thereon. 


30  AUSTRALIAN  COMMONWEALTH 

Removal  of  Trade  Mark  from  the  Register  if  no  bona  fide  User 

72.  (1)  The  Court  may,  on  the  application  of  any  person 
aggrieved,  if  it  is  shown  that  there  has  been  no  bona  fide  user  of 
a  trade  mark  for  a  consecutive  period  of  three  years  since  the 
date  of  the  last  registration  thereof,  order  its  removal  from 
the  register,  unless  it  was  at  the  date  of  the  application  in  bona 
fide  use  and  had  been  so  for  a  period  of  six  months  immediately 
prior  to  the  date  of  the  application. 

(2)  For  the  purpose  of  this  section  bona  fide  user  or  use 
means  user  or  use  of  a  trade  mark  in  respect  of  the  goods  in 
respect  of  which  it  is  registered  for  the  purposes  of  trade  by 
the  proprietor  of  the  trade  mark  or  a  predecessor  in  title. 
Registrar  to  Carry  Out  Orders  for  Rectification 

73.  The  Registrar,  upon  being  served  with  any  order  of 
the  Court  for  the  rectification  of  the  register  or  for  the  re- 
moval of  the  registration  of  a  trade  mark  from  the  register  by 
the  party  seeking  to  enforce  it,  shall  cause  the  rectification  or 
removal  to  be  made  accordingly. 

PART  VII— WORKER'S  TRADE  MARKS 
(Repealed  by  Amendatory  Law  No.  19  of  1912.) 

PART  VIII— THE  COMMONWEALTH  TRADE  MARK 

Application  of  Part 

78.  (1)  This  part  shall  apply  to  all  go'ods  included  in  or 
specified  by  a  resolution  passed  by  both  Houses  of  the  Parlia- 
ment that  in  their  opinion  the  conditions  as  to  the  remuneration 
of  labour  in  connexion  with  their  manufacture  are  fair  and 
reasonable. 

(2)  A  resolution  shall  be  deemed  to  have  been  passed  at 
the  commencement  of  this  Act  by  both  Houses  of  the  Parliament 
that  the  conditions  as  to  the  remuneration  of  labour  are  fair 
and  reasonable  in  respect  of  goods  which  are  manufactured  in 
any  part  of  the  Commonwealth  under  conditions  as  to  the  re- 
muneration of  labour  prescribed,  required,  or  provided  in  rela- 
tion to  the  goods,  by  an  industrial  award  or  order,  or  an  indus- 
trial agreement,  under  an  industrial  law. 

(3)  In  this  Part  "an  industrial  law"  means  any  Act  or 
State  Act  existing  at  the  commencement  of  this  Act  and  pro- 
viding for  conciliation  or  arbitration,  or  both  conciliation  and 
arbitration,  or  the  determination  of  the  remuneration  of  labour 
in  connexion  with  industrial  matters  or  the  manufacture  of 
goods,  or  any  statutory  modification,  amendment  or  re-enactment 
thereof,  respectively,  or  any  Act  or  State  Act  passed  after  the 
commencement  of  this  Act  and  declared  by  resolution  of  both 


AUSTRALIAN  COMMONWEALTH  31 

Houses  of  the  Parliament  to  be  an  industrial  law  within  the 
meaning  of  this  Part;  and  " industrial  award  or  order"  includes 
any  determination  of  any  Special  Board  or  Court  under  an  in- 
dustrial law. 

(4)  A  resolution  passed  or  deemed  to  have  been  passed  as 
aforesaid  may  be  by  both  Houses  of  the  Parliament  revoked  in 
whole  or  in  part,  and  thereupon  this  Part  shall  to  the  extent  of 
the  revocation  cease  to  apply. 

Registration  of  Commonwealth  Trade  Mark 

79.  (1)  The  Minister  may  cause  to  be  designed  and  regis- 
tered a  trade  mark  (in  this  Part  called  the  Commonwealth  Trade 
Mark)  consisting  of  a  distinctive  device  or  label  bearing  the 
words  " Australian  Labour  Conditions." 

(2)  The  Commonwealth  trade  mark  shall  not  contain  the 
name  of  or  indicate  any  State. 

(3)  Parts  III,  IV,  V,  and  VI,  of  this  Act  shall  not  apply 
in  relation  to  the  Commonwealth  trade  mark. 

Effect  of  Registration  of  Commonwealth  Trade  Mark 

80.  (1)  Upon  the  registration  of  the  Commonwealth  trade 
mark  the  Minister  shall  be  deemed  to  be  the  proprietor  thereof, 
and  shall  be  entitled  to  prevent  the  unauthorized  application  of 
the  Commonwealth  trade  mark. 

(2)  The  rights  of  the  proprietor  of  the  Commonwealth 
trade  mark  shall  be  deemed  to  be  infringed  by  the  unauthorized 
application  to  goods  of  a  mark  identical  or  substantially  identi- 
cal with  the  Commonwealth  trade  mark,  or  so  nearly  resembling 
it  as  to  be  likely  to  deceive. 

(3)  The  Minister  may  sue  to  prevent  infringement  of  the 
Commonwealth  trade  mark. 

Unauthorised  Application  of  Commonwealth  Trade  Mark 

81.  The  application  of  the  Commonwealth  trade  mark  to 
goods  shall  be  deemed  to  be  unauthorized  unless — 

(a)  it  is  applied  by  or  by  direction  of  the  first  proprietor 
of  the  goods,  and  is  so  applied  by  the  authority  of  the  Minis- 
ter; and 

(b)  it  is  applied  to  goods  to  which  this  Part  applies;  and 

(c)  the  first  proprietor  of  the  goods  has  personally  manu- 
factured them,  or  has  paid  for  the  labour  other  than  his  own 
in  connexion  with  their  manufacture  at  least  the  minimum 
amount  prescribed,  required,  or  provided  to  be  paid  to  persons 
actually  making  the  goods  by  an  industrial  award  or  order,  or 
an  industrial  agreement  under  an  industrial  law. 

Authority  of  Minister 

82.  (1)  The  authority  of  the  Minister  to  any  person  to 


32  AUSTRALIAN  COMMONWEALTH 

apply  the  Commonwealth  trade  mark  may  be  given  either  gen- 
erally or  in  respect  of  specific  goods,  and  shall  be  given  if  in  his 
opinion  the  trade  mark  will  not  be  applied  except  as  authorized 
by  this  Part. 

(2)  The  Minister  may  revoke  his  authority  in  whole  or  in 
part  if  in  his  opinion  a  person  to  whom  it  has  been  given  has 
applied  or  is  likely  to  apply  the  trade  mark  in  a  manner  un- 
authorized by  this  Part. 

Penalty  for  Infringing  Commonwealth  Trade  Mark 

83.  (1)  No  person  shall  wilfully  infringe  the  rights  of  the 
Minister  as  proprietor  of  the  Commonwealth  trade  mark. 

Penalty:  Fifty  pounds. 

(2)  No  person  shall  knowingly  sell  or  expose  for  sale,  or 
have  in  his  possession  for  sale  or  for  any  purpose  of  trade  or 
manufacture,  any  goods  to  which  any  mark  is  applied  in  in- 
fringement of  the  rights  of  the  Minister  as  proprietor  of  the 
Commonwealth  trade  mark. 

Penalty:  Fifty  pounds. 

Prohibition  of  Importation  of  Goods  to  which  Commonwealth 
Trade  Mark  Applied 

84.  No  person  shall  knowingly  import  into  Australia  any 
goods,  not  manufactured  or  produced  in  Australia,  to  which 
there  is  applied: 

(a)  the  Commonwealth  trade  mark,  or 

(b)  a  mark  substantially  identical  with  the  Commonwealth 
trade  mark,  or 

(c)  a  mark  so  nearly  resembling  the  Commonwealth  trade 
mark  as  to  be  likely  to  deceive. 

Penalty:  One  hundred  pounds  in  addition  to  any  liability 
to  forfeiture  provided  by  law. 

Removal  from  Register  of  Commonwealth  Trade  Mark 

85.  The  Commonwealth  trade  mark  may,  on  the  applica- 
tion of  the  Minister,  be  removed  from  the  register  in  the  man- 
ner prescribed. 

PART  IX— PROTECTION  OF  TRADE  MARKS 

Forgery  of  False  Application  of  Trade  Marks 

86.  Whoever — 

(a)  forges  a  registered  trade  mark;  or 

(b)  falsely  apjjlies  a  registered  trade  mark  to  any  goods ;  or 

(c)  makes  any  die,  block,  machine,  or  instrument  for  the 
purpose  of  forging  or  of  being  used  for  forging  a  registered 
trade  mark;  or 

(d)  disposes  of  or  has  in  his  possession  any  die,  block, 


AUSTRALIAN  COMMONWEALTH  33 

machine,  or  instrument  for  the  purpose  of  forging  or  of  being 
used  for  forging  a  registered  trade  mark, 

shall,  unless  he  proves  that  he  acted  without  intent  to  defraud, 
be  guilty  of  an  indictable  offence,  and  liable  to  imprisonment 
for  any  term  not  exceeding  three  years. 

Selling,  etc.,  Goods  with  False  Marks 
87.  Whoever  sells  or  exposes  for  sale,  or  has  in  his  pos- 
session for  sale  or  for  any  purpose  of  trade  or  manufacture, 
any  goods  to  which  any  forgery  of  a  registered  trade  mark  is 
applied  or  to  which  any  registered  trade  mark  is  falsely  ap- 
plied, shall  be  guilty  of  an  offence  against  this  Act,  unless  he 
proves — 

(a)  that  he  acted  without  intent  to  defraud;  or 

(b)  that  the  goods  were  manufactured  in  or  imported  into 
Australia  and  the  trade  mark  was  applied  to  them  before  the 
commencement  of  this  Act,  and  were  held  by  him  bond  fide  and 
without  intent  to  defraud. 

Penalty :  One  hundred  pounds. 

Forfeiture  of  Articles,  etc.,  on  Conviction 

87 A..  (1)  Where  any  person  is  convicted  of  an  offence 
against  section  eighty-six  or  section  eighty-seven  of  this  Act,  he 
shall  be  liable,  in  addition  to  the  punishment  provided  by  those 
sections,  to  forfeit  to  the  King  every  chattel,  article,  instrument, 
or  thing  by  means  of  or  in  relation  to  which  the  offence  was 
committed. 

Search  Warrant 

8?B.  (1)  Where,  upon  information  of  an  offence  against 
section  eighty-six  or  section  eighty-seven  of  this  Act,  a  Justice 
of  the  Peace  has  issued  either  a  summons  requiring  the  de- 
fendant to  appear  to  answer  the  charge  or  a  warrant  for  the 
arrest  of  the  defendant,  and  either  the  said  Justice,  on  or  after 
issuing  the  summons  or  warrant,  or  any  other  Justice  of  Peace, 
is  satisfied  by  information  on  oath  that  there  is  reasonable 
cause  to  suspect  that  any  goods  or  things  by  means  of  or  in 
relation  to  which  the  offence  was  committed  are  in  any  house 
or  premises  of  the  defendant,  or  otherwise  in  his  possession  or 
under  his  control  in  any  place,  such  Justice  may  issue  a  warrant 
under  his  hand  by  virtue  of  which  it  shall  be  lawful  for  any 
constable  named  or  referred  to  in  the  warrant  to  enter  the 
house,  premises,  or  place  at  any  reasonable  time  by  day,  and 
to  search  there  for  and  seize  and  take  away  those  goods  or 
things ;  and  any  goods  or  things  seized  under  the  warrant  shall 
be  brought  before  a  court  of  summary  jurisdiction  for  the  pur- 
pose of  its  being  determined  whether  they  are  or  are  not  liable 


34  AUSTRALIAN  COMMONWEALTH 

to  forfeiture  under  this  Act. 

(2)  If  the  owner  of  any  goods  or  things  which,  if  the  owner 
thereof  had  been  convicted,  would  be  liable  to  forfeiture  under 
this  Act,  is  unknown  or  cannot  be  found,  an  information  or  com- 
plaint may  be  laid  for  the  purpose  only  of  enforcing  the  for- 
feiture of  the  goods  or  things,  and  a  court  of  summary  jurisdic- 
tion may  cause  notice  to  be  advertised  stating  that,  unless  cause 
is  shown  to  the  contrary  at  the  time  and  place  named  in  the 
notice,  the  goods  or  things  will  be  forfeited,  and  at  the  time  and 
place  the  Court,  unless  the  owner  or  any  person  on  his  behalf, 
or  other  person  interested  in  the  goods  or  things,  shows  cause 
to  the  contrary,  may  order  the  goods  or  things  or  any  of  them 
to  be  forfeited. 

(3)  Any  goods  or  things  forfeited  under  this  section  may 
be  destroyed  or  otherwise  disposed  of  in  such  manner  as  the 
court  of  summary  jurisdiction  by  which  they  are  forfeited 
directs,  and  the  court  may,  out  of  any  proceeds  which  are  real- 
ized by  the  disposition  of  the  goods  (all  trade  marks  and  trade 
descriptions  being  first  obliterated),  award  to  any  innocent 
party  any  loss  he  has  innocently  sustained  in  dealing  with  the 
goods. 

Importing  Goods  with  False  Marks 

88.  Whoever  imports  into  Australia  any  goods  to  which 
any  forgery  of  a  registered  trade  mark  is  applied  or  to  which 
a  registered  trade  mark  is  falsely  applied  shall,  unless  he  proves 
that  he  did  not  knowingly  import  the  goods  in  contravention  of 
this  Act,  be  guilty  of  an  offence  against  this  Act. 

Penalty:   One  hundred  pounds. 

Aiding  and  Abetting  Offences 

89.  Whoever  aids,  abets,  counsels,  or  procures,  or  is  in  any 
way  knowingly  directly  or  indirectly  concerned  in  or  privy  to — 

(a)  the  commission  of  any  offence  against  this  Act;  or 

(b)  the  commission  of  any  Act  outside  Australia  which  if 
committed  in  Australia  would  be  an  offence  against  this  Act, 
shall  be  guilty  of  an  offence  against  this  Act. 

Penalty:   One  hundred  pounds. 
Prohibition  of  Importation  of  Fraudulently  Marked  Goods 

90.  (1)  The  following  goods  are  prohibited  to  be  imported, 
and,  if  imported,  may  be  seized  as  forfeited  to  the  King : 

(a)  All  goods  to  which  any  forgery  of  a  registered  trade 
mark  is  applied,  or  to  which  any  registered  trade  mark  is  falsely 
applied ; 

(b)  All  goods  manufactured  at  any  place  outside  Australia 
and  having  applied  to  them  any  trade  mark  being  the  registered 


35 

trade  mark  of  any  manufacturer,  dealer  or  trader  in  Australia 
unless  the  trade  mark  is  accompanied  by  a  definite  indication 
of  the  country  in  which  the  goods  were  made  or  produced ;  and 
(c)  All  goods  manufactured  at  any  place  outside  Australia 
and  having  applied  to  them  any  name  purporting  to  be  the  name 
of  any  manufacturer,  dealer  or  trader  in  Australia,  unless  the 
name  is  accompanied  by  a  definite  indication  of  the  country  in 
which  the  goods  were  made  or  produced. 

(2)  Subject  to  the  regulations,  the  Comptroller-General  of 
Customs  or,  on  appeal  from  him,  the  Minister  for  Trade  and 
Customs  may,  if  in  his  opinion  the  contravention  has  not  oc- 
curred either  knowingly  or  negligently,  permit  any  goods  which 
are  liable  to  be  or  have  been  seized  as  forfeited  under  this  sec- 
tion to  be  delivered  to  the  owner  or  importer  upon  security 
being  given  to  the  satisfaction  of  the  Comptroller-General  of 
Customs  that  the  improper  marks  will  be  effectually  removed 
from  the  goods  or  that  such  additions  will  be  made  as  will 
render  unobjectionable  any  mark  or  name  applied  to  the  goods 
or  that  the  goods  will  be  forthwith  exported. 

(3)  All  imported  goods  liable  to  be  seized  under  this  sec- 
tion may  be  seized  by  any  officer  of  Customs. 

(4)  The  provisions  of  the  Customs  Act,  1901,  shall  apply 
to  the  seizure  and  forfeiture  of  goods  under  this  section  to  the 
same  extent  as  if  they  were  prohibited  imports  under  that  Act. 

(5)  Before  taking  any  action  under  this  section  or  permit- 
ting any  officer  of  Customs  to  act  thereunder,  the  Collector  of 
Customs  for  the  State  may  require  any  person  requesting  any 
action  on  the  part  of  the  Customs  to  give  security  in  accordance 
with  the  regulations,  but  the  Collector  of  Customs  may  act  under 
this  section  without  any  request. 

Power  to  Require  Information  in  Respect  of  Imported  Goods 

Bearing  Fraudulent  Marks 

90A.  (1)  Where  any  goods  which  are  liable  to  forfeiture 
under  the  preceding  section  are  imported  into  Australia,  and 
the  goods  bear  any  name  or  trade  mark  being  or  purporting  to 
be  the  name  or  trade  mark  of  any  manufacturer,  dealer  or  trader 
in  Australia,  and  the  Comptroller-General  of  Customs  is,  upon 
representations  made  to  him,  satisfied  that  the  use  of  the  name 
or  trade  mark  is  fraudulent,  the  proper  officer  of  Customs  may 
require  the  importer  of  the  goods,  or  his  agent,  to  produce  any 
documents  in  his  possession  relating  to  the  goods,  and  to  fur- 
nish information  as  to  the  name  and  address  of  the  person  by 
whom  the  goods  were  consigned  to  Australia,  and  the  name  and 
address  of  the  person  to  whom  the  goods  were  sent  in  Australia ; 
and,  if  the  importer  or  his  agent  fails  within  fourteen  days  to 


36  AUSTRALIAN  COMMONWEALTH 

comply  with  any  such  requirement,  he  shall  be  guilty  of  an 
offence. 

Penalty:   One  hundred  pounds. 

(2)  Any  information  obtained  from  the  importer  of  the 
goods  or  his  agent  under  this  section,  or  from  any  other  source, 
may  be  communicated  by  the  Comptroller-General  to  any  person 
whose  name  or  trade  mark  is  alleged  to  have  been  used  or 
infringed. 

What  Deemed  Forgery  of  Trade  Mark 

91.  A  person  shall  be  deemed  to  forge  a  registered  trade 
mark  who  either — 

(a)  without  the  assent  of  the  proprietor  of  the  trade  mark 
or  the  authority  of  this  Act,  makes  it  or  a  mark  so  nearly  resem- 
bling it  as  to  be  likely  to  deceive ;  or 

(b)  falsifies  any  registered  trade  mark,  whether  by  altera- 
tion, addition,  effacement,  or  otherwise. 

When  Trade  Mark  Deemed  Applied 

92.  (1)  A  trade  mark  shall  be  deemed  to  be  applied  to 
anything  if  it  is  woven  in,  impressed  on,  worked  into,  or  an- 
nexed or  affixed  to,  the  thing. 

When  Trade  Mark  Deemed  Applied  to  Goods 

(2)  A  trade  mark  shall  be  deemed  to  be  applied  to  goods 
if— 

(a)  it  is  applied  to  the  goods  themselves;  or 

(b)  it  is  applied  to  any  covering,  label,  reel,  or  thing  in  or 
with  which  the  goods  are  sold  or  exposed  or  had  in  possession 
for  any  purpose  of  trade  or  manufacture;  or 

(c)  it  is  used  in  any  manner  likely  to  lead  to  the  belief  that 
it  refers  to  or  describes  or  designates  the  goods. 

(3)  "Covering"  includes  any  stopper,  glass,  bottle,  vessel, 
box,  capsule,  case,  frame,  or  wrapper;  and  " label"  includes  any 
band  or  ticket. 

What  Deemed  False  Application  of  a  Trade  Mark 

(4)  A  trade  mark  shall  be  deemed  to  be  falsely  applied  to 
goods  if,  without  the  assent  of  the  proprietor  of  the  trade  mark 
or  the  authority  of  this  Act,  it  or  a  mark  so  nearly  resembling 
it  as  to  be  likely  to  deceive  is  applied  to  the  goods. 

Trade  Mark,  How  Described  in  Pleading 

93.  In  any  indictment,  information,  pleading,  or  proceed- 
ing in  relation  to  a  registered  trade  mark,  it  shall  not  be  neces- 
sary to  set  out  a  copy  or  fac-simile  of  the  trade  mark  or  a  de- 
scription of  it,  but  the  trade  mark  may  be  referred  to  as  a  regis- 
tered trade  mark. 


AUSTRALIAN  COMMONWEALTH  37 

PART  X— MISCELLANEOUS 

Governor-General  May  Make  Regulations 

94.  The  Governor-General  may  make  regulations,  not  in- 
consistent with  this  Act,  prescribing  the  fees  to  be  paid  under 
this  Act  and  all  matters  which  by  this  Act  are  required  or  per- 
mitted to  be  prescribed  or  which  are  necessary  or  convenient 
to  be  prescribed  for  giving  effect  to  this  Act  or  for  the  conduct 
of  any  business  relating  to  the  Trade  Marks  Office. 

Incidental  Powers  of  Court 

95.  In  addition  to  any  other  powers  conferred  on  it  by 
this  Act,  the  Court  may  in  relation  to  any  appeal  or  applica- 
tion under  this  Act — 

(a)  refuse  to  make  any  order; 

(b)  order  any  issue  of  fact  to  be  tried  in  such  manner  as 
it  directs ; 

(c)  order  any  party  to  deliver  to  the  Court  or  to  the  Regis- 
trar the  certificate  of  registration  of  any  trade  mark ;  and 

(d)  order  any  party  to  pay  costs  to  any  other  party. 

Powers  of  Registrar  and  Law  Officer 

96.  The  Registrar  and  the  Law  Officer,  respectively,  may 
for  the  purposes  of  this  Act — 

(a)  summon  witnesses ; 

(b)  require  the  production  of  documents;  and 

(c)  award  costs  against  any  party  to  any  proceeding  be- 
fore him. 

Penalty  for  Disobedience  to  Summons 

97.  No  person  who  has  been  summoned  to  appear  as  a 
witness  before  the  Registrar  or  the  Law  Officer  shall,  without 
lawful  excuse  and  after  tender  of  reasonable  expenses,  fail  to 
appear  in  obedience  to  the  summons. 

Penalty:   Fifty  pounds. 

Penalty  for  Refusing  to  Give  Evidence 

98.  No  person  who  appears  before  the  Registrar  or  the 
Law  Officer  as  a  witness  shall,  without  lawful  excuse,  refuse  to 
be  sworn  or  make  an  affirmation  or  to  produce  documents  or  to 
answer  questions  which  he  is  lawfully  required  to  answer. 

Penalty:   Fifty  pounds. 

Recovery  of  Costs 

99.  Any  sum  awarded  for  costs  by  the  Registrar  or  the 
Law  Officer  may,  in  default  of  payment,  be  recovered  in  any 
civil  court  of  competent  jurisdiction  as  a  debt  due  by  the  person 
against  whom  the  order  is  made  to  the  person  in  whose  favour 
the  order  is  made. 


38  AUSTRALIAN  COMMONWEALTH 

Certificate  of  Validity 

100.  In  any  legal  proceeding  in  which  the  validity  of  the 
registration  of  a  registered  trade  mark  comes  into  question  and 
is  decided  in  favour  of  the  proprietor  of  the  trade  mark,  the 
Court  or  a  Judge  thereof  may  certify  the  same,  and  if  it  or  he 
so  certifies  then  in  any  subsequent  legal  proceeding  in  which 
such  validity  comes  into  question,  the  proprietor  of  the  said 
trade  mark  on  obtaining  a  final  order  or  judgment  in  his  favour 
shall  have  his  full  costs,  charges,  and  expenses  as  between  solici- 
tor and  client,  unless  in  such  subsequent  proceeding  the  Court 
or  a  Judge  thereof  certifies  that  he  ought  not  to  have  the  same. 
Remedy  in  Case  of  Groundless  Threats  of  Legal  Proceedings 

100A.  Where  any  person  claiming  to  be  the  proprietor  of 
a  trade  mark,  by  circulars,  advertisements,  or  otherwise, 
threatens  any  other  person  with  any  legal  proceedings  or  lia- 
bility in  respect  of  any  alleged  infringement  of  the  trade  mark, 
any  person  aggrieved  thereby  may  bring  an  action  against  him, 
and  may  obtain  an  injunction  against  the  continuance  of  such 
threats,  and  may  recover  such  damages  (if  any)  as  he  has  sus- 
tained thereby  if  the  alleged  infringement  to  which  the  threats 
related  was  not  in  fact  an  infringement  of  any  legal  rights  of 
the  person  making  the  threats : 

Provided  that  this  section  shall  not  apply  if  the  person 
making  the  threats  with  due  diligence  commences  and  prose- 
cutes an  action  for  infringement  of  his  trade  mark. 

False  Representation  to  Registrar  or  Officer 

101.  No  person  shall  wilfully  make  any  false  statement  or 
representation  to  deceive  the  Registrar  or  any  officer  in  the 
execution  of  this  Act,  or  to  procure  or  influence  the  doing  or 
omission  of  anything  in  relation  to  this  Act  or  any  matter  there- 
under. 

Penalty:   Three  years  *  imprisonment. 
Power  of  Amendment 

102.  The  Registrar  may  at  any  time  before  registration 
of  a  trade  mark  permit  the  amendment  of  the  application  for 
the  registration  of  the  trade  mark,  and  may  at  any  time  permit 
the  amendment  of  any  notice  of  opposition  on  such  terms  as  to 
costs  or  otherwise  as  he  thinks  just. 

Exercise  of  Discretionary  Power 

103.  Where  any  discretionary  power  is  by  this  Act  given 
to  the  Registrar,  he  shall  not  exercise  that  power  adversely  to 
the  applicant  for  registration  or  the  registered  proprietor  of 
the  trade  mark  in  question,  without  (if  so  required  within  the 
prescribed  time  by  the  applicant)  giving  the  applicant  or  regis- 


AUSTRALIAN  COMMONWEALTH  39 

tered  proprietor  an  opportunity  of  being  heard  personally  or 
by  his  agent. 

Fees  to  be  Paid  in  Advance 

104.  Where  any  prescribed  fee  is  payable  in  respect  of 
any  act  or  document,  the  Registrar  may  refuse  to  permit  or  per- 
form the  act  or  to  receive  or  issue  the  document  as  the  case 
requires,  until  the  fee  payable  in  respect  thereof  is  paid. 

Extension  of  Time 

105.  Where  by  this  Act  any  time  is  specified  within  which 
any  Act  or  thing  is  to  be  done,  the  Registrar  may,  unless  other- 
wise expressly  provided,  extend  the  time  either  before  or  after 
its  expiration. 

Applications  and  Notices  Toy  Post 

106.  Any  application,  notice,  or  other  document,  author- 
ized or  required  under  this  Act  to  be  left,  made,  or  given  at  the 
Trade  Marks  Office,  or  to  the  Registrar,  or  to  any  other  person, 
may  be  sent  by  a  prepaid  letter  through  the  post. 

Address  for  Service 

107.  (1)  Any  address  for  service  stated  in  any  applica- 
tion or  notice  of  opposition  shall  for  all  purposes  of  the  applica- 
tion or  notice  of  opposition  be  deemed  to  be  the  address  of  the 
applicant  or  opponent,  as  the  case  requires,  and  all  documents 
in  relation  to  the  application  or  notice  of  opposition  may  be 
served  by  leaving  them  at  or  sending  them  to  the  address  for 
service  of  the  applicant  or  opponent,  as  the  case  requires. 

(2)  Any  address  for  service  may  be  changed  by  notice  in 
writing  to  the  Registrar. 

Declaration  by  Infant,  Lunatic,  etc. 

108.  If  any  person  is,  by  reason  of  infancy,  lunacy,  or  other 
inability,  incapable  of  making  any  declaration  or  doing  anything 
required  or  permitted  by  this  Act  or  the  regulations,  then  the 
guardian  or  committee  (if  any)  of  such  incapable  person,  or,  if 
there  be  none,  any  person  appointed  by  any  Federal  or  State 
Court  or  Justice  thereof,  possessing  jurisdiction  in  respect  of 
the  property  of  incapable  persons,  upon  the  petition  of  any 
person  on  behalf  of  the  incapable  person  or  of  any  other  person 
interested  in  the  making  of  such  declaration  or  doing  such  thing, 
may  make  the  declaration,  or  a  declaration  as  nearly  corre- 
sponding thereto  as  circumstances  permit,  and  do  the  thing  in 
the  name  and  on  behalf  of  the  incapable  person,  and  all  acts 
done  by  such  substitute  shall  for  the  purposes  of  this  Act  be 
as  effectual  as  if  done  by  the  person  for  whom  he  is  substituted. 

Death  of  a  Party  to  a  Proceeding 

109.  If  a  person  who  is  a  party  to  a  proceeding  under  this 


40  AUSTRALIAN  COMMONWEALTH 

Act  dies  pending  the  proceeding,  the  Registrar  may  on  request 
made  in  the  prescribed  manner,  and  on  proof  to  his  satisfaction 
of  the  transmission  of  the  interest  of  the  deceased  person,  sub- 
stitute in  the  proceeding  his  successor  in  interest  in  his  place, 
or,  if  he  is  of  opinion  that  the  interest  of  the  deceased  person 
is  sufficiently  represented  by  the  surviving  parties,  permit  the 
proceeding  to  continue  without  such  substitution. 
Registrar  May  Recognize  Agent 

110.  Subject  to  the  regulations,  the  Registrar  may  permit 
any  agent  to  do,  on  behalf  of  any  other  person,  any  act  in  con- 
nexion with  the  registration  of  trade  marks  or  any  procedure 
relating  thereto. 

Certificate  of  Registrar  Evidence 

111.  A  certificate  purporting  to  be  under  the  hand  of  the 
Registrar  and  the  seal  of  the  Trade  Marks  Office  as  to  any  entry, 
matter,  or  thing  which  he  is  authorized  by  this  Act  to  make  or 
do  shall  be  primd  facie  evidence  of  the  entry  having  been  made 
and  of  the  contents  thereof,  and  of  the  matter  or  thing  having 
been  done  or  left  undone. 

Penalty  on  Falsely  Representing  a  Trade  Mark  as  Registered 

112.  (1)  Any  person  who  represents  a  trade  mark  as  regis- 
tered which  is  not  so  shall  be  liable  for  every  offence  on  sum- 
mary conviction  to  a  fine  not  exceeding  five  pounds. 

(2)  A  person  shall  be  deemed,  for  the  purposes  of  this 
section,  to  represent  that  a  trade  mark  is  registered  if  he  uses 
in  connexion  with  the  trade  mark  the  word  " registered,"  or 
any  words  expressing  or  implying  that  registration  has  been  ob- 
tained for  the  trade  mark. 

Penalty  on  Unauthorised  Assumption  of  Royal  Arms  or 
Commonwealth  Arms 

113.  (1)  No  person  shall,  without  the  authority  of  the 
King,  or  of  some  member  of  the  Royal  Family,  or  of  the  Gover- 
nor-General, or  of  the  Governor  of  a  State,  or  of  some  Depart- 
ment of  the  Government  of  the  Commonwealth  or  of  a  State 
(proof  whereof  shall  lie  upon  the  person  accused),  assume  or 
use  in  connexion  with  any  trade,  business,  calling  or  profession 
the  Royal  Arms  or  Arms  so  nearly  resembling  the  Royal  Arms 
as  to  be  likely  to  deceive. 

(2)  No  person  shall,  without  the  authority  of  the  King,  or 
of  some  member  of  the  Royal  Family,  or  of  the  Governor- 
General,  or  of  some  Department  of  the  Government  of  the  Com- 
monwealth (proof  whereof  shall  lie  upon  the  person  accused), 
assume  or  use  in  connexion  with  any  trade,  business,  calling 
or  profession  the  Arms  of  the  Commonwealth  or  Arms  so  nearly 


AUSTRALIAN  COMMONWEALTH  41 

resembling  the  Arms  of  the  Commonwealth  as  to  be  likely  to 
deceive. 

Penalty :  Twenty  pounds. 

Scandalous  and  Improper  Marks 

114.  No  scandalous  design,  and  no  mark  the  use  of  which 
would  by  reason  of  its  being  likely  to  deceive  or  otherwise  be 
deemed  disentitled  to  protection  in  a  court  of  justice,  or  the 
use  of  which  would  be  contrary  to  law  or  morality,  shall  be 
used  or  registered  as  a  trade  mark  or  part  of  a  trade  mark. 

Power  to  Prohibit  by  Proclamation  Use  of  Any  Word  or  Mark 
114A.  Where  the  Governor-General  by  proclamation  de- 
clares any  word  or  mark  to  be  for  the  purposes  of  section 
eighteen  of  this  Act  a  prohibited  word  or  mark,  the  Governor- 
General  may  if  he  thinks  fit  by  that  or  any  subsequent  procla- 
mation declare  that  any  such  word  or  mark  or  any  word  or 
mark  so  nearly  resembling  that  word  or  mark  as  to  be  likely  to 
deceive  shall  not  be  used  or  registered  as  a  trade  mark  or  part 
of  a  trade  mark,  either  at  all  or  after  a  date  to  be  specified  by 
the  Governor-General,  and  after  the  date  of  the  proclamation, 
or  the  date  specified  in  the  proclamation,  as  the  case  may  be, 
the  word  or  mark,  or  any  word  or  mark  so  nearly  resembling 
the  word  or  mark  as  to  be  likely  to  deceive,  shall  cease  to  be 
used  or  registered  as  a  trade  mark  or  part  of  a  trade  mark. 

International  Arrangements  for  Protection  of  Trade  Marks 

115.  (1)  If  upon  the  request  of  the  Governor-General  the 
King  is  pleased  to  apply  to  the  Commonwealth  any  law  of  the 
United  Kingdom  for  carrying  into  effect  any  arrangement  made 
with  the  Government  of  any  foreign  State  for  the  mutual  pro- 
tection of  trade  marks,  then  any  person  who  has  applied  for 
protection  for  any  trade  mark  in  the  United  Kingdom  or  the 
Isle  of  Man,  or  in  any  foreign  State  with  which  the  arrange- 
ment has  been  made,  shall  be  entitled  to  registration  of  his  trade 
mark  under  this  Act  in  priority  to  other  applicants,  and  such 
registration  shall  have  the  same  date  as  the  date  of  the  original 
application  in  the  United  Kingdom  or  the  Isle  of  Man,  or  such 
foreign  State  as  the  case  may  be : 

Provided  that  such  application  shall  be  made  within  six 
months  from  such  person  applying  for  protection  in  the  United 
Kingdom,  or  the  Isle  of  Man,  or  the  foreign  State  with  which 
the  arrangement  is  in  force: 

Provided  also  that  nothing  in  this  section  contained  shall 
entitle  the  proprietor  of  the  trade  mark  to  recover  damages  for 
infringements  happening  prior  to  the  date  of  the  actual  regis- 
tration of  his  trade  mark  in  the  Commonwealth. 


42  AUSTRALIAN  COMMONWEALTH 

(2)  The  use  of  the  trade  mark  in  the  Commonwealth  during 
the  period  aforesaid  shall  not  invalidate  its  registration. 

(3)  The  application  for  the  registration  of  a  trade  mark 
under  this  section  must  be  made  in  the  same  manner  as  an  or- 
dinary application  under  this  Act. 

(4)  The  provisions  of  this  section  shall,  in  the  case  of 
foreign  States,  apply  only  to  those  foreign  States  with  respect 
to  which  His  Majesty,  by  Order-in-Council,  has  before  or  after 
the  commencement  of  this  Act  declared  the  provisions  of  the 
aforesaid  law  to  be  applicable,  and  so  long  only  in  the  case  of 
each  such  State  as  the  order  continues  in  force  with  respect 
to  that  State. 

Provision  for  Intercolonial,  etc.,  Arrangements 
116.  (1)  Where  it  is  made  to  appear  to  the  Governor- 
General  that  any  British  possession  has  made  satisfactory  pro- 
vision for  the  protection  in  that  possession  of  trade  marks  regis- 
tered in  the  Commonwealth,  the  Governor-General  may  by 
order  apply  all  or  any  of  the  provisions  of  the  last  preceding 
section  with  such  variations  or  additions  (if  any)  as  to  him 
seem  fit  to  trade  marks  registered  in  that  British  possession. 

(2)  An  order  under  this  section  shall,  from  a  date  to  be 
mentioned  therein,  take  effect  as  if  its  provisions  were  con- 
tained in  this  Act,  but  it  shall  be  lawful  for  the  Governor- 
General  to  revoke  any  such  order. 


AUSTRIA 

LAW  OF  JANUARY  6, 1890,  AS  AMENDED  MARCH  17, 1913 

SECTION  I 

GENERAL  PROVISIONS 

ARTICLE  1.  In  this  law,  under  the  term  " Marks"  are  un- 
derstood the  special  marks  (such  as  devices,  numbers,  vignettes 
and  the  like)  that  serve  to  distinguish  in  commerce  certain 
products  and  goods  from  other  similar  products  and  goods. 

In  the  decision  as  to  whether  a  mark  is  adapted  therefor, 
there  shall  be  taken  into  consideration  all  facts,  in  particular, 
the  duration  of  the  use  of  the  mark,  in  accordance  with  the 
conception  of  the  line  of  business  concerned. 

ART.  2.  Any  person  wishing  to  secure  the  exclusive  right 
to  use  a  mark  must  obtain  the  registration  of  the  same  con- 
formably with  the  provisions  of  the  following  sections. 

ART.  3.  Excluded  from  being  registered,  and,  accordingly, 
no  exclusive  right  to  them  can  be  obtained,  are  such  marks : 

1)  As  are  exclusively  composed  of  portraits  of  the  Emperor 
or  of  members  of  the  Imperial  House ; 

2)  As  merely  consist  of  the  national  or  other  public  arms, 
or  words ; 

3)  As  are  in  general  commercial  use  for  certain  kinds  of 
goods ; 

4)  As  contain  improper  representations  causing  scandal 
or  otherwise  contrary  to  public  morality,  or  such  inscriptions 
or  statements  as  do  not  correspond  to  the  actual  commercial 
state  of  affairs  or  the  truth,  and  are  liable  to  deceive  the  con- 
suming public. 

ART.  4.  Such  marks  in  which  portraits  of  the  Emperor 
or  of  any  members  of  the  Imperial  House,  a  distinction  of  honor, 
the  Imperial  Eagle  or  public  arms,  form  a  constituent  part,  shall 
only  be  registered  if  the  right  to  use  these  special  marks  within 
the  meaning  of  the  existing  provisions  shall  have  been  pre- 
viously evidenced. 

ART.  5.  No  person  shall  be  prevented,  through  the  regis- 
tration of  any  mark  which  also  contains  letters  or  words,  from 
using  his  name  or  that  of  his  firm,  even  if  it  be  in  an  abbre- 
viated form,  for  distinguishing  his  goods. 

ART.  6.  The  use  of  registered  marks  is  in  general  optional, 
but  the  Minister  of  Commerce  may  decree,  as  regards  certain 


44  AUSTRIA 

kinds  of  goods,  that  goods  of  that  class  shall  not  be  put  into 
circulation  unless  they  are  provided  with  marks  registered  in 
the  sense  of  this  law,  according  to  the  procedure  to  be  stipulated. 

ART.  7.  The  sole  right  to  a  mark  shall  not  exclude  the  use 
of  the  same  mark  by  another  applicant  for  other  classes  of 
goods. 

In  case  of  any  doubt  relative  to  the  similarity  of  these 
classes  of  goods,  the  Minister  of  Commerce  shall  decide  after 
consultation  with  the  Chamber  of  Commerce  and  Industry  (See 
Art.  13). 

ART.  8.  The  application  for  several  marks  in  the  name  of 
one  applicant,  even  if  they  are  for  the  same  class  of  goods,  is 
permitted  conformably  with  the  provisions  of  this  law. 

ART.  9.  The  right  to  a  mark  shall  go  with  the  business  for 
which  the  mark  is  intended,  shall  expire  with  the  same,  and  shall 
be  transferred  to  the  new  proprietor  in  case  of  transfer  of 
ownership. 

The  new  owner,  however,  if  he  does  not  continue  to  conduct 
his  business  under  an  unchanged  name,  shall  effect  the  assign- 
ment of  the  mark.  Until  this  assignment  has  been  executed  in 
the  Register  of  the  Chamber  of  Commerce  and  Industry,  he 
cannot  make  valid  the  right  to  the  mark,  and  all  official  com- 
munications relating  to  the  mark  may  be  forwarded,  to  his  dis- 
advantage, to  the  registered  owner  of  the  mark  or  to  his  repre- 
sentative of  record. 

ART.  10.  No  person  shall  make  use  of  the  name,  firm,  in- 
signia, or  trade  name  of  the  establishment  of  another  manu- 
facturer or  merchant  for  distinguishing  goods  or  products  with- 
out the  consent  of  the  party  in  question. 

ART.  11.  Everything  that  is  stated  in  this  law  regarding 
the  marking  of  goods  applies  also  to  the  marks  affixed  to  the 
cases,  barrels,  wrappers  and  the  like. 

ART.  12.  Nothing  is  altered  by  the  present  law  in  the  exist- 
ing provisions  relating  to  special  marks  for  certain  goods,  es- 
pecially the  provisions  as  to  punched  marks. 

SECTION  II 

REGISTRATION,  TRANSFER,  AND  EXTINCTION  OF  MARKS 

1.    Registration 

ART.  13.  Four  copies  of  the  mark  for  which  any  person 
shall  desire  to  obtain  the  exclusive  right  must  be  filed  in  the 
Chamber  of  Commerce  and  Industry  in  whose  district  the  busi- 
ness in  question  is  situated. 


AUSTRIA  45 

One  copy  shall  be  attached  to  the  Register  of  Marks  which 
is  to  be  kept  by  the  Chamber  of  Commerce  and  Industry;  one 
copy  shall  be  returned  to  the  applicant,  inscribed  with  the  ac- 
knowledgment prescribed  in  the  succeeding  paragraph. 

Two  copies  shall  be  laid  before  the  Minister  of  Commerce. 

The  applicant  must,  at  the  same  time,  state  for  what  classes 
of  goods  his  mark  is  intended. 

Further,  a  cliche  (electrotype)  of  each  mark  must  be  filed 
with  the  Chamber  of  Commerce  and  Industry,  which  will  be 
returned  to  the  applicant  after  having  been  used. 

In  the  case  of  marks  for  materials  such  as  metal,  earthen- 
ware, glass  and  the  like,  at  least  three  samples  of  the  materials 
with  the  marks  impressed  therein  shall  be  filed. 

AET.  14.  Upon  each  specimen  of  the  marks  filed,  the  Bu- 
reau designated  by  the  Chamber  of  Commerce  and  Industry 
shall  note: 

a)  The  serial  number  of  the  Register; 

b)  The  day  and  hour  of  the  filing; 

c)  The  name  or  the  firm  for  which  the  mark  is  to  be  regis- 
tered ; 

d)  The  indication  of  the  business  and  goods  for  which  it 
is  intended. 

This  notation  must  be  signed  and  the  official  seal  affixed. 

The  Registers  of  Marks  shall  contain  the  details  cited  in 
paragraphs  [a]  to  [d]  and  shall  be  open  to  inspection  at  the 
Chambers  of  Commerce  and  Industry. 

AET.  15.  For  registering  each  mark,  a  fee  of  five  gulden 
shall  be  paid,  which  shall  go  into  the  treasury  of  the  Chamber 
of  Commerce  and  Industry  in  which  the  registration  was  ef- 
fected. 

AET.  16.  The  registration  of  marks  shall  be  renewed  every 
ten  years,  reckoning  from  the  date  of  registration,  by  a  fresh 
payment  of  the  fee;  otherwise  the  right  to  the  mark  will  be 
considered  as  expired. 

AET.  17.  A  Central  Register  of  Marks  shall  be  kept  at  the 
Ministry  of  Commerce,  in  which  the  marks  registered  in  the 
Chambers  of  Commerce  and  Industry  shall  be  entered  in  rota- 
tion as  they  arrive. 

The  same  details  shall  be  given  in  the  general  Register  of 
Marks  as  are  contained  in  the  Registers  to  be  kept  by  the  Cham- 
bers of  Commerce  and  Industry  (See  Art.  14). 

The  Central  Register  of  Marks,  as  well  as  the  catalogues 
of  its  contents,  which  are  to  be  alphabetically  arranged  and 
always  kept  up  to  date,  shall  be  kept  open  for  inspection  in  the 
offices  of  the  Ministry  in  question. 


46  AUSTRIA 

The  same  applies  to  the  samples  (Art.  13). 

Prints  of  the  marks,  after  the  latter  have  been  entered  in 
the  Central  Register,  shall  be  published,  using  the  blocks  fur- 
nished (as  per  Art.  13). 

ART.  18.  The  Minister  of  Commerce,  if  necessary,  after 
consultation  with  experts,  shall  notify  the  applicant  for  protec- 
tion if  a  mark  identical  or  similar  to  the  one  just  applied  for 
exists  already  for  the  same  class  of  goods,  in  order  that  the 
applicant,  according  to  his  judgment,  may  sustain,  modify  or 
withdraw  the  application. 

The  proprietor  of  the  previously  registered  mark  shall  be, 
at  the  same  time,  informed  that  notice  has  been  given  to  the 
applicant  for  protection  of  the  mark. 

ART.  19.  The  exclusive  right  to  use  a  mark  by  an  appli- 
cant shall  commence  from  the  day  and  hour  of  filing  the  same 
at  the  Chamber  of  Commerce  and  Industry,  and  the  priority 
shall  be  decided  therefrom,  should  similar  marks  have  been  filed 
by  several  applicants  for  protection  at  the  same  or  different 
Chambers  of  Commerce  and  Industry. 

2.  Transfers 

ART.  20.  In  order  to  transfer  the  right  to  a  mark,  within 
the  meaning  of  Art.  9,  the  assignee  must  produce  proof  of  his 
having  acquired  the  business  to  which  it  relates. 

The  transfer  shall  be  subject  to  the  same  tax  as  the  first 
registration  (Art.  15),  and  shall  be  entered  on  the  certificate 
granted  to  the  applicant  (Art.  13,  paragraph  2),  as  well  as  in 
the  Register  of  the  Chamber  of  Commerce  and  Industry  (Art. 
14),  and  in  the  Central  Register  of  Marks  (Art.  17),  and  pub- 
lished (Art.  17,  last  paragraph). 

3.  Extinction 
ART.  21.    Marks  shall  become  extinct : 

a)  On  application  of  the  proprietor  of  the  mark; 

b)  If  the  registration  shall  not  have  been  renewed  when 
due  under  the  provisions  of  Art.  16 ; 

c)  .  .  .  (repealed  by  Law  of  March  17,  1913.) 

d)  If  the  Minister  of  Commerce  shall  decide  that  the  mark 
should  not  have  been  registered ; 

e)  In  consequence  of  the  decision  of  the  Minister  of  Com- 
merce pronounced  in  any  action  as  to  the  existence  of  a  right 
to  a  mark  (Art.  30). 

ART.  22.  The  extinction  of  a  mark  shall  be  entered  on  the 
certificate  (Art.  14),  as  well  as  in  the  Register  of  the  Chamber 
of  Commerce  and  Industry  (Art.  14),  and  on  the  Central  Trade 
Mark  Register,  and  shall  be  published  (Art.  17). 


AUSTRIA  47 

SECTION  III 

INFRINGEMENT  OF  THE  RIGHTS  TO  A  MARK 

ART.  23.  Any  person  who  shall  knowingly  put  in  circula- 
iton  or  keep  for  sale  goods  that  are  unauthorizedly  marked  with 
a  mark,  the  exclusive  right  of  user  of  which  belongs  to  another, 
and  further,  any  person  who  for  this  purpose  knowingly  coun- 
terfeits a  mark,  commits  an  offence  and  shall  be  liable  to  be 
punished  by  a  fine  of  from  500  to  2,000  gulden,  or  with  from 
three  months'  to  a  year's  imprisonment,  to  which  a  fine  of  2,000 
gulden  may  be  added. 

The  simultaneous  application  of  the  more  stringent  stipula- 
tions of  the  general  Penal  Code,  especially  those  relating  to  the 
crime  of  fraud  (Art.  197  and  ff.)  is  not  thereby  excluded. 

ART.  24.  The  stipulation  of  Art.  23  applies  also  to  those 
who  knowingly  put  in  circulation,  or  keep  for  sale,  goods  that 
are  unauthorizedly  marked  with  the  name,  firm,  insignia,  or 
trade  name  of  the  establishment  of  a  producer  or  merchant; 
further,  to  those  who  knowingly  fabricate  such  marks. 

ART.  25.  The  liability  to  punishment  for  the  acts  enu- 
merated in  Arts.  23  and  24  is  not  avoided  if  the  mark,  name, 
firm,  insignia,  business  style  of  the  establishment,  be  repro- 
duced with  so  slight  an  alteration  or  in  such  an  indistinct  man- 
ner that  the  difference  might  be  detected  by  the  ordinary  pur- 
chaser of  the  goods  in  question  only  through  special  watch- 
fulness. 

ART.  26.  The  ordinary  courts  shall  be  invoked  for  taking 
proceedings  and  the  passing  of  sentence  for  the  offences  de- 
tailed in  Arts.  23  and  24. 

An  action  shall  be  commenced  only  on  petition  of  the  in- 
jured party. 

ART.  27.  On  petition  of  the  injured  party  an  order  shall 
be  made  that  the  tools  and  appliances  exclusively  or  specially 
used  for  the  counterfeiting  or  unauthorized  reproduction  shall 
be  rendered  unserviceable  for  this  purpose,  that  the  stocks  of 
counterfeit  marks  and  unauthorizedly  manufactured  labels  shall 
be  destroyed,  and  the  unauthorized  marks  and  labels  removed 
from  goods  found  in  the  possession  of  the  guilty  persons,  or, 
in  this  respect,  from  the  packages  of  the  same,  even  if  that  should 
involve  the  destruction  of  the  goods. 

The  injured  party  shall  be  further  authorized  to  publicly 
make  known  the  judgment  against  the  infringer  at  the  expense 
of  the  latter.  The  mode  of  publication,  as  well  as  the  duration 
of  the  same,  shall  be  fixed  in  the  decision  after  consideration 
of  the  petition  of  the  injured  party. 


48  AUSTRIA 

On  application  of  the  injured  party,  instead  of  the  com- 
pensation due  him  on  his  private  rights,  in  addition  to  the 
penalty,  a  monetary  fine  to  the  amount  of  5,000  gulden,  to  be 
handed  to  the  injured  party,  may  be  decreed  by  the  Court  of 
Justice,  the  amount  to  be  fixed  after  free  and  careful  considera- 
tion of  all  the  circumstances.  Persons  sentenced  to  pay  a  mone- 
tary fine  shall  be  considered  as  joint  debtors.  The  provisions 
of  this  paragraph  shall  apply,  even  if  the  punishment  take  place 
under  the  stricter  stipulations  of  the  general  Penal  Code. 

ART.  28.  The  injured  party  shall  be  entitled,  even  before 
the  punitive  judgment  is  decreed,  to  demand  the  confiscation 
or  seizure  of  the  articles  enumerated  in  Art.  27,  paragraph  1, 
so  that  a  repetition  of  the  punishable  act  may  be  prevented. 

The  Criminal  Court  shall  adjudicate  immediately  on  this 
application,  and  it  shall  also  be  optional  for  it  to  authorize  the 
desired  confiscation  and  corresponding  custody,  as  well  as  the 
other  measures  desired,  only  against  security  to  be  given  by  the 
injured  party. 

ART.  29.  Should  the  injured  party  demand,  for  any  of  the 
offences  described  in  Arts.  23  and  24,  the  grant  of  compensation 
through  a  Civil  Court,  the  latter  shall  decide  as  to  the  right  to 
compensation,  as  well  as  the  amount  of  the  same,  after  due 
consideration  of  all  the  circumstances. 

ART.  30.  The  Minister  of  Commerce  shall  decide  the  point 
whether  the  exclusive  right  of  user  of  a  mark  pertains  to  any 
person,  also  as  to  the  priority  and  transfer  of  this  right,  and 
also  whether  a  registered  mark  may  be  used  by  another  party 
for  a  different  class  of  goods  (Art.  7). 

Should  it  appear,  in  the  course  of  criminal  proceedings  in 
any  of  the  cases  enumerated  in  Art.  23,  that  a  decision  of  a 
question  is  dependent  upon  a  prior  question,  regarding  which, 
under  the  first  paragraph,  the  Minister  of  Commerce  has  to 
adjudicate,  the  Criminal  Court  shall,  after  submitting  the  neces- 
sary documents  to  the  Minister  in  question,  request  him  to 
decide  this  question  first  and  shall  await  the  notice  of  same. 

ART.  31.  Contraventions  of  the  prescriptions  set  forth  in 
Art.  6  shall  be  punished  by  the  Administrative  Courts  in  ac- 
cordance with  stipulations  of  the  Industrial  Law,  in  which  for- 
feiture of  the  goods  in  question  is  always  decreed. 

SECTION  IV 

MARKS  RELATING  TO  ENTERPRISES  OUTSIDE  AUSTRIA 
ART.  32.    As  regards  the  protection  of  marks,  as  well  as 
of  names,  firms,  insignia,  or  trade  names  of  establishments  of 
foreign  enterprises,  this  shall  take  place  in  accordance  with 


AUSTRIA  49 

treaties  or  conventions  concluded  with  the  States  in  question. 

The  owners  of  foreign  establishments  shall  be  entitled  to 
the  protection  of  this  law  as  respects  the  classes  of  trade  marks 
specified  in  the  first  paragraph,  in  respect  of  which  reciprocity 
exists,  in  so  far  as  no  agreements  or  conventions  exist. 

The  existence  of  reciprocity  shall  be  made  known  through 
a  decree  to  be  published  in  the  Reichsgesetzblatt. 

The  regulations  of  the  Customs  and  Commercial  Union  shall 
decide  under  what  conditions  marks  registered  in  the  territory 
of  the  Royal  Hungarian  Crown,  and  also  names,  firms,  insignia, 
or  trade  designations  of  establishments  of  manufacturers  or 
merchants  of  that  country,  shall  share  in  the  protection  secured 
by  this  law. 

SECTION  V 

CONCLUDING  REGULATIONS 

ART.  33.  Marks  that  shall  have  been  registered  under  for- 
mer provisions  and  with  reference  to  which,  under  Art.  16,  the 
stipulated  period  of  ten  years  for  new  registration  from  the 
time  of  registration  to  the  coming  into  effect  of  this  law  has  not 
yet  elapsed,  shall  enjoy,  until  the  lapse  of  the  ten  years,  the 
protection  accorded  under  the  provisions  of  this  law  without  re- 
registration. 

On  the  other  hand,  such  marks  as,  on  the  coming  into  force 
of  this  law,  shall  have  been  registered  more  than  ten  years, 
shall,  after  the  lapse  of  three  months,  reckoned  from  the  time 
of  coming  into  force  of  this  law,  be  stricken  from  the  Register 
if  the  proprietor  of  the  mark  in  question  shall  not  have  regis- 
tered it  anew  during  this  interval. 

Such  applications  as  shall  be  pending  at  the  time  of  the 
coming  into  force  of  this  law  shall  be  completed  before  those 
authorities  that  have  previously  been  competent,  and  on  the 
ground  of  former  provisions. 

ART.  34.  The  present  law  for  the  protection  of  marks  shall 
become  effective  on  the  expiry  of  three  months  from  the  day  of 
its  publication. 

On  the  date  specified  the  law  of  December  7,  1858  (Reichs- 
gesetzblatt,  No.  230),  shall  cease  to  be  of  effect. 

ART.  35.  My  Minister  of  Commerce,  My  Minister  of  the 
Interior  and  My  Minister  of  Justice  are  intrusted  with  the 
execution  of  this  law. 


BAHAMA  ISLANDS 

LAW  OP  MAY  29,  1906 

Short  title 

1.  This  Act  may  be  cited  as  the  Trade  Marks  Act  1906. 

Commencement  of  Act 

2.  This  Act  shall  come  into  operation  on  such  a  day  as 
the  Governor  may  by  Proclamation  appoint. 

PART  I 

DEFINITIONS 

3.  In  and  for  the  purposes  of  this  Act  (unless  the  context 
otherwise  requires) : — 

A  "mark"  shall  include  a  device,  brand,  heading,  label, 
ticket,  name,  signature,  word,  letter,  numeral,  or  any  combina- 
tion thereof: 

A  " trade  mark'*  shall  mean  a  mark  used  or  proposed  to  be 
used  upon  or  in  connection  with  goods  for  the  purpose  of  indi- 
cating that  they  are  the  goods  of  the  proprietor  of  such  trade 
mark,  by  virtue  of  manufacture,  selection,  certification,  dealing 
with,  or  offering  for  sale : 

A  "registrable  trade  mark"  shall  mean  a  trade  mark  which 
is  capable  of  registration  under  the  provisions  of  this  Act : 

"The  Register"  shall  mean  the  Register  of  Trade  Marks 
kept  under  the  provisions  of  this  Act: 

A  "registered  trade  mark"  shall  mean  a  trade  mark  which 
is  actually  upon  the  Register: 

"Goods"  shall  mean  anything  which  is  the  subject  of  trade, 
manufacture  or  merchandise. 

"Covering"  shall  include  any  stopper,  cask,  bottle,  vessel, 
box,  cover,  capsule,  case,  frame  or  wrapper: 

"Label"  shall  include  any  band  or  ticket: 

"Prescribed"  shall  mean,  in  relation  to  proceedings  before 
the  Court,  prescribed  by  rules  of  Court,  and,  in  other  cases, 
prescribed  by  this  Act  or  the  Rules  thereunder: 

"The  Court"  shall  mean  the  Supreme  Court  and  includes 
the  Chief  Justice  sitting  in  Chambers. 

REGISTER  OF  TRADE  MARKS 

4.  There  shall  be  kept  at  the  Office  of  the  Registrar  of 
Records  for  the  purposes  of  this  Act  a  book  called  the  Register 
of  Trade  Marks,  wherein  shall  be  entered  all  registered  trade 
marks  with  the  names  and  addresses  of  their  proprietors,  noti- 


BAHAMA  ISLANDS  51 

fications  of  assignments  and  transmissions,  disclaimers,  condi- 
tions, limitations  and  such  other  matters  relating  to  such  trade 
marks  as  may  from  time  to  time  be  prescribed.  The  Register 
shall  be  kept  under  the  control  and  management  of  the  Registrar 
of  Records,  who  is  in  this  Act  referred  to  as  the  Registrar. 

Trust  not  to  be  entered  on  register 

5.  There  shall  not  be  entered  in  the  Register  any  notice 
of  any  trust  expressed,  implied  or  constructive,  nor  shall  any 
such  notice  be  receivable  by  the  Registrar. 

Inspection  of  extract  from  register 

6.  The  Register  kept  under  this  Act  shall  at  all  convenient 
times  be  open  to  the  inspection  of  the  public,  subject  to  such 
regulations  as  may  be  prescribed;  and  certified  copies  sealed 
with  the  seal  of  the  Office,  of  any  entry  in  such  Register  shall 
be  given  to  any  person  requiring  the  same  on  payment  of  the 
prescribed  fee. 

REQISTBABLE  TBADE  MABKS 
Trade  mark  must  be  for  particular  goods 

7.  A  trade  mark  must  be  registered  in  respect  of  particu- 
lar goods  or  classes  of  goods. 

Registrable  trade  marks 

8.  A  registrable  trade  mark  must  contain  or  consist  of 
at  least  one  of  the  following  essential  particulars: — 

(1)  The  name  of  a  company,  individual,  or  firm  represented 
in  a  special  or  particular  manner; 

(2)  The  signature  of  the  applicant  for  registration  or 
some  predecessor  in  his  business; 

(3)  An  invented  word  or  invented  words; 

(4)  A  word  or  words  having  no  direct  reference  to  the 
character  or  quality  of  the  goods,  and  not  being  according  to 
its  ordinary  signification  a  geographical  name  or  a  surname; 

(5)  Any  other  distinctive  mark,  but  a  name,  signature,  or 
word  or  words,  other  than  such  as  fall  within  the  descriptions 
in  the  above  paragraphs  (1)  (2)  (3)  and  (4)  shall  not,  except 
by  order  of  the  Court,  be  deemed  a  distinctive  mark: 

For  the  purposes  of  this  section  " distinctive"  shall  mean 
adapted  to  distinguish  the  goods  of  the  proprietor  of  the  trade 
mark  from  those  of  other  persons. 

In  determining  whether  a  trade  mark  is  so  adapted,  the 
tribunal  may,  in  the  case  of  a  trade  mark  in  actual  use,  take 
into  consideration  the  extent  to  which  such  user  has  rendered 
such  trade  mark  in  fact  distinctive  for  the  goods  with  respect 
to  which  it  is  registered  or  proposed  to  be  registered. 


52  BAHAMA  ISLANDS 

Coloured  trade  marks 

9.  A  trade  mark  may  be  limited  in  whole  or  in  part  to  one 
or  more  specified  colours,  and  in  such  case  the  fact  that  it  is 
so  limited  shall  be  taken  into  consideration  by  any  tribunal 
having  to  decide  on  the  distinctive  character  of  such  trade 
mark.     If  and  so  far  as  a  trade  mark  is  registered  without 
limitation  of  colour  it  shall  be  deemed  to  be  registered  for  all 
colours. 

Restriction  on  registration 

10.  It  shall  not  be  lawful  to  register  as  a  trade  mark  or 
part  of  a  trade  mark  any  matter,  the  use  of  which  would  by 
reason  of  its  being  calculated  to  deceive  or  otherwise  be  dis- 
entitled to  protection  in  a  Court  of  Justice,  or  would  be  con- 
trary to  law  or  morality,  or  any  scandalous  design. 

REGISTRATION  OF  TRADE  MARKS 
Application  for  Registration 

11.  (i)  Any  person  claiming  to  be  the  proprietor  of  a 
trade  mark  who  is  desirous  of  registering  the  same  must  apply 
in  writing  to  the  Registrar  in  the  prescribed  manner. 

(ii)  Subject  to  the  provisions  of  this  Act  the  Registrar 
may  refuse  such  application,  or  may  accept  it  absolutely  or 
subject  to  conditions,  amendments  or  modifications. 

(iii)  In  case  of  any  such  refusal  or  conditional  acceptance 
the  Registrar  shall,  if  required  by  the  applicant,  state  in  writ- 
ing the  grounds  of  his  decision  and  the  materials  used  by  him 
in  arriving  at  the  same,  and  such  decision  shall  be  subject  to 
appeal  to  the  Court  at  the  option  of  the  applicant. 

(iv)  An  appeal  under  this  section  shall  be  made  in  the  pre- 
scribed manner,  and  on  such  appeal  the  court  shall,  if  required, 
hear  the  applicant  and  the  Registrar;  and  shall  make  an  order 
determining  whether,  and  subject  to  what  conditions,  amend- 
ments and  modifications,  if  any,  the  application  is  to  be 
accepted. 

(v)  Appeals  under  this  section  shall  be  heard  on  the 
materials  so  stated  by  the  Registrar  to  have  been  used  by  him 
in  arriving  at  his  decision,  and  no  further  grounds  of  objection 
to  the  acceptance  of  the  application  shall  be  allowed  to  be  taken 
by  the  Registrar,  other  than  those  stated  by  him,  except  by 
leave  of  the  Court  hearing  the  appeal.  Where  any  further 
grounds  of  objection  are  taken  the  applicant  shall  be  entitled 
to  withdraw  his  application  without  payment  of  costs  on  giving 
notice  as  prescribed. 

(vi)  The  Registrar  or  the  Court  as  the  case  may  be  may 
at  any  time  whether  before  or  after  acceptance,  correct  any 


BAHAMA  ISLANDS  53 

error  in  or  in  connection  with  the  application  or  may  permit 
the  applicant  to  amend  his  application  upon  such  terms  as  may 
be  thought  fit. 

Advertisement  of  application 

12.  When  an  application  for  registration  of  a  trade  mark 
has  been  accepted,  whether  absolutely  or  subject  to  conditions, 
the  Registrar  shall,  as  soon  as  may  be  after  such  acceptance, 
cause  the  application  as  accepted  to  be  advertised  in  the  pre- 
scribed manner.    Such  advertisement  shall  set  forth  all  condi- 
tions subject  to  which  the  application  has  been  accepted. 

Opposition  to  registration 

13.  (i)  Any  person  may,  within  the  prescribed  time  from 
the  date  of  the  advertisement  of  an  application  for  the  regis- 
tration of  a  trade  mark,  give  notice  to  the  Registrar  of  opposi- 
tion to  such  registration. 

(ii)  Such  notice  shall  be  given  in  writing  in  the  prescribed 
manner,  and  shall  include  a  statement  of  the  grounds  of 
opposition. 

(iii)  The  Registrar  shall  send  a  copy  of  such  notice  to  the 
applicant,  and,  within  the  prescribed  time  after  the  receipt  of 
such  notice,  the  applicant  shall  send  to  the  Registrar,  in  the 
prescribed  manner,  a  counterstatement  of  the  grounds  on  which 
he  relies  for  his  application,  and,  if  he  does  not  do  so,  he  shall 
be  deemed  to  have  abandoned  his  application. 

(iv)  If  the  applicant  send  such  counterstatement,  the  Reg- 
istrar shall  furnish  a  copy  thereof  to  the  persons  giving  notice 
of  opposition,  and  shall,  after  hearing  the  parties,  if  so  required 
and  considering  the  evidence,  decide  whether,  and  subject  to 
what  conditions,  registration  is  to  be  permitted. 

(v)  The  decision  of  the  Registrar  shall  be  subject  to  appeal 
to  the  Court. 

(vi)  An  appeal  under  this  section  shall  be  made  in  the 
prescribed  manner,  and  on  such  appeal  the  Court,  shall,  if 
required,  hear  the  parties  and  the  Registrar,  and  shall  make 
an  order  determining  whether,  and  subject  to  what  conditions, 
if  any,  registration  is  to  be  permitted. 

(vii)  On  the  hearing  of  any  such  appeal  any  party  may 
either  in  the  manner  prescribed  or  by  special  leave  of  the  Court 
bring  forward  further  material  for  the  consideration  of  thf. 
Court. 

(viii)  In  proceedings  under  this  section  no  further  grounds 
of  objection  to  the  registration  of  a  trade  mark  shall  be  allowed 
to  be  taken  by  the  opponent  or  the  Registrar  other  than  those 
stated  by  the  opponent  as  herein-above  provided,  except  by 
leave  of  the  Court.  Where  any  further  grounds  of  objection 


54  BAHAMA  ISLANDS 

are  taken  the  applicant  shall  be  entitled  to  withdraw  his  appli- 
cation without  payment  of  the  costs  of  the  opponent  or  giving 
notice  as  prescribed. 

(ix)  In  any  appeal  under  this  section,  the  Court  may,  after 
hearing  the  Registrar,  permit  the  trade  mark  proposed  to  be 
registered  to  be  modified  in  any  manner  not  substantially  affect- 
ing the  identity  of  such  trade  mark,  but  in  such  case  the  trade 
mark  as  so  modified  shall  be  advertised  in  the  prescribed  man- 
ner before  being  registered. 

(x)  The  Registrar  shall  have  power  in  proceedings  under 
this  section  to  award  to  any  party  such  costs  as  he  may  consider 
reasonable,  and  to  direct  how  and  by  what  parties  they  are  to 
be  paid. 

(xi)  If  a  party  giving  notice  of  opposition  or  of  appeal 
neither  resides  nor  carries  on  business  in  the  Colony,  the  Court 
may  require  such  party  to  give  security  for  costs  of  the  pro- 
ceedings before  it  relative  to  such  opposition  or  appeal,  and, 
in  default  of  such  security  being  duly  given,  may  treat  the  oppo- 
sition or  appeal  as  abandoned. 

Disclaimers 

14.  If  a  trade  mark  contains  parts  not  separately  regis- 
tered by  the  proprietor  as  trade  marks,  or  if  it  contains  matter 
common  to  the  trade  or  otherwise  of  a  non-distinctive  character, 
the  Registrar  or  the  Court,  in  deciding  whether  such  trade  mark 
shall  be  entered  or  shall  remain  upon  the  Register,  may  require, 
as  a  condition  of  its  being  upon  the  Register,  that  the  proprietor 
shall  disclaim  any  right  to  the  exclusive  use  of  any  part  or  parts 
of  such  trade  mark,  or  of  all  or  any  portion  of  such  matter,  to 
the  exclusive  use  of  which  they  hold  him  not  to  be  entitled,  or 
that  he  shall  make  such  other  disclaimer  as  they  may  consider 
needful  for  the  purpose  of  defining  his  rights  under  such  regis- 
tration: Provided  always  that  no  disclaimer  upon  the  Register 
shall  affect  any  rights  of  the  proprietor  of  a  trade  mark  except 
such  as  arise  out  of  the  registration  of  the  trade  mark  in  respect 
of  which  the  disclaimer  is  made. 

Date  of  registration 

15.  When  an  application  for  registration  of  a  trade  mark 
has  been  accepted  and  has  not  been  opposed,  and  the  time  for 
notice  of  opposition  has  expired,  or  having  been  opposed  the 
opposition  has  been  decided  in  favor  of  the  applicant,  the  Regis- 
trar shall  register  the  said  trade  mark,  and  the  trade  mark 
when  registered  shall  be  registered  as  of  the  date  of  the  appli- 
cation for  registration  and  such  date  shall  be  deemed  for  the 
purposes  of  this  Act  to  be  the  date  of  registration. 


BAHAMA  ISLANDS  55 

Certificate  of  registration 

16.  On  the  registration  of  a  trade  mark  the  Registrar  shall 
issue  to  the  applicant  a  certificate  in  the  prescribed  form  of  the 
registration  of  such  trade  mark  under  the  hand  of  the  Registrar 
and  sealed  with  the  Seal  of  the  Office. 

Non-completion  of  registration 

17.  Where  registration  of  a  trade  mark  is  not  completed 
within  twelve  months  from  the  date  of  the  application  by  reason 
of  default  on  the  part  of  the  applicant,  the  Registrar  may,  after 
giving  notice  of  the  non-completion  to  the  applicant  in  writing 
in  the  prescribed  manner,  treat  the  application  as  abandoned 
unless  it  is  completed  within  the  time  specified  in  that  behalf  in 
such  notice. 

IDENTICAL  TRADE  MARKS 

18.  Except  by  order  of  the  Court,  no  trade  mark  shall  be 
registered  in  respect  of  any  goods  or  description  of  goods  which 
is  identical  with  one  belonging  to  a  different  proprietor  which 
is  already  on  the  register  with  respect  to  such  goods  or  de- 
scription of  goods,  or  so  nearly  resembling  such  a  trade  mark 
as  to  be  calculated  to  deceive. 

Rival  claims  to  identical  marks 

19.  Where  each  of  several  persons  claims  to  be  proprietor 
of  the  same  trade  mark,  or  of  nearly  identical  trade  marks  in 
respect  of  the  same  goods  or  description  of  goods,  and  to  be 
registered  as  such  proprietor,  the  Registrar  may  refuse  to  regis- 
ter any  of  them  until  their  rights  have  been  determined  by  the 
Court,  or  have  been  settled  by  agreement  in  a  manner  approved 
by  him. 

Concurrent  user 

20.  In  case  of  honest  concurrent  user  or  of  other  special 
circumstances  which,  in  the  opinion  of  the  Court,  make  it  proper 
so  to  do,  the  Court  may  permit  the  registration  of  the  same  trade 
mark,  or  of  nearly  identical  trade  marks,  for  the  same  goods 
or  description  of  goods  by  more  than  one  proprietor,  subject  to 
such  conditions  and  limitations,  if  any,  as  to  mode  or  place  of 
user,  or  otherwise,  as  it  may  think  it  right  to  impose. 

ASSIGNMENT 
Assignment  and  transmission  of  trade  marks 

21.  A  trade  mark  when  registered  shall  be  assigned  and 
transmitted  only  in  connection  with  the  goodwill  of  the  business 
concerned  in  the  goods  for  which  it  has  been  registered  and  shall 
be  determinable  with  that  goodwill.    But  nothing  in  this  section 
contained  shall  be  deemed  to  affect  the  right  of  the  proprietor 
of  a  registered  trade  mark  to  assign  the  right  to  use  the  same 


56  BAHAMA  ISLANDS 

in  any  British  possession  or  protectorate  or  foreign  country  in 
connection  with  any  goods  for  which  it  is  registered,  together 
with  the  goodwill  of  the  business  therein  in  such  goods. 
Apportionment  of  marks  on  dissolution  of  partnership 

22.  In  any  case  where  from  any  cause,  whether  by  reason 
of  dissolution  of  partnership  or  otherwise,  a  person  ceases  to 
carry  on  business,  and  the  goodwill  of  such  person  does  not  pass 
to  one  successor  but  is  divided,  the  Registrar  may  (subject  to 
the  provisions  of  this  Act  as  to  associated  trade  marks)  on  the 
application  of  the  parties  interested,  permit  an  apportionment 
of  the  registered  trade  marks  of  the  person  among  the  persons 
in  fact  continuing  the  business,  subject  to  such  conditions  and 
modifications,  if  any,  as  he  may  think  necessary  in  the  public 
interest.    Any  decision  of  the  Registrar  under  this  section  shall 
be  subject  to  appeal  to  the  Governor  in  Council. 

ASSOCIATED  TEADE  MAKKS 

23.  If  application  be  made  for  the  registration  of  a  trade 
mark  so  closely  resembling  a  trade  mark  of  the  applicant  al- 
ready on  the  register  for  the  same  goods  or  description  of  goods 
as  to  be  calculated  to  deceive  or  cause  confusion  if  used  by  a 
person  other  than  the  applicant,  the  tribunal  hearing  the  appli- 
cation may  require  as  a  condition  of  registration  that  such  trade 
marks  shall  be  entered  on  the  register  as  associated  trade  marks. 

Combined  trade  marks 

24.  If  the  proprietor  of  a  trade  mark  claims  to  be  entitled 
to  the  exclusive  use  of  any  portion  of  such  trade  mark  sepa- 
rately, he  may  apply  to  register  the  same  as  separate  trade 
marks.     Each  such  separate  trade  mark  must  satisfy  all  the 
conditions  and  shall  have  all  the  incidents  of  an  independent 
trade  mark,  except  that  when  registered  it  and  the  trade  mark 
of  which  it  forms  a  part  shall  be  deemed  to  be  associated  trade 
marks  and  shall  be  entered  on  the  register  as  such,  but  the  user 
of  the  whole  trade  mark  shall  for  the  purposes  of  this  Act  be 
deemed  to  be  also  a  user  of  such  registered  trade  marks  belong- 
ing to  the  same  proprietor  as  it  contains. 

Series  of  trade  marks 

25.  When  a  person  claiming  to  be  the  proprietor  of  several 
trade  marks  for  the  same  description  of  goods  which,  while  re- 
sembling each  other  in  the  material  particulars  thereof,  yet 
differ  in  respect  of — 

(a)  statements  of  the  goods  for  which  they  are  respectively 
used  or  proposed  to  be  used ;  or 

(b)  statements  of  number,  price,  quality,   or  names   of 
places;  or 


BAHAMA  ISLANDS  57 

(c)  other  matter  of  a  non-distinctive  character  which  does 
not  substantially  affect  the  identity  of  the  trade  mark;  or 

(d)  colour; 

seeks  to  register  such  trade  marks,  they  may  be  registered  as  a 
series  in  one  registration.  All  the  trade  marks  in  a  series  of 
trade  marks  so  registered  shall  be  deemed  to  be,  and  shall  be 
registered  as,  associated  trade  marks. 

Assignment  and  user  of  associated  trade  marks 

26.  Associated  trade  marks  shall  be  assignable  or  trans- 
missible only  as  a  whole  and  not  separately,  but  they  shall  for 
all  other  purposes  be  deemed  to  have  been  registered  as  separate 
trade  marks.    Provided  that,  where  under  the  provisions  of  this 
Act  user  of  a  registered  trade  mark  is  required  to  be  proved 
for  any  purpose,  the  tribunal  may,  if  and  so  far  as  it  shall  think 
right,  accept  user  of  an  associated  registered  trade  mark,  or  of 
the  trade  mark  with  additions  or  alterations  not  substantially 
affecting  its  identity,  as  an  equivalent  for  such  user. 

RENEWAL  OF  REGISTRATION 
Duration  of  registration 

27.  The  registration  of  a  trade  mark  shall  be  for  a  period 
of  fourteen  years,  but  may  be  renewed  from  time  to  time  in 
accordance  with  the  provisions  of  this  Act. 

Renewal  of  registration 

28.  The  Registrar  shall,  on  application  made  by  the  regis- 
tered proprietor  of  a  trade  mark  in  the  prescribed  manner  and 
within  the  prescribed  period,  renew  the  registration  of  such 
trade  mark  for  a  period  of  fourteen  years  from  the  expiration 
of  the  original  registration  or  of  the  last  renewal  of  registra- 
tion, as  the  case  may  be,  which  date  is  herein  termed  "the  ex- 
piration of  the  last  registration." 

Procedure  on  expiry  of  period  of  registration 

29.  At  the  prescribed  time,  before  the  expiration  of  the 
last  registration  of  a  trade  mark,  the  Registrar  shall  send  notice 
in  the  prescribed  manner  to  the  registered  proprietor  at  his 
registered  address  of  the  date  at  which  the  existing  registration 
will  expire  and  the  conditions  as  to  payment  of  fees  and  other- 
wise upon  which  a  renewal  of  such  registration  may  be  obtained, 
and  if,  at  the  expiration  of  the  time  prescribed  in  that  behalf, 
such  conditions  have  not  been  fully  complied  with,  the  Registrar 
may  remove  such  trade  mark  from  the  Register,  subject  to  such 
conditions  (if  any)  as  to  its  restoration  to  the  Register  as  may 
be  prescribed. 

Status  of  unrenewed  trade  marks 

30.  Where  a  trade  mark  has  been  removed  from  the  Regis- 


58  BAHAMA  ISLANDS 

ter  for  nonpayment  of  the  fee  for  renewal,  such  trade  mark 
shall,  nevertheless,  for  the  purpose  of  any  application  for  regis- 
tration during  one  year  next  after  the  date  of  such  removal,  be 
deemed  to  be  a  trade  mark  which  is  already  registered,  unless 
it  is  shown  to  the  satisfaction  of  the  Registrar  that  there  has 
been  no  bona  fide  trade  user  of  such  trade  mark  during  the  two 
years  immediately  preceding  such  removal. 

CORRECTION  AND  RECTIFICATION  OF  THE  REGISTER 
Correction  of  register 

31.  The  Registrar  may,  on  request  made  in  the  prescribed 
manner  by  the  registered  proprietor  or  by  some  person  entitled 
by  law  to  act  in  his  name — 

(1)  correct  any  error  in  the  name  or  address  of  the  regis- 
tered proprietor  of  a  trade  mark;  or 

(2)  enter  any  change  in  the  name  or  address  of  the  person 
who  is  registered  as  proprietor  of  a  trade  mark;  or 

(3)  cancel  the  entry  of  a  trade  mark  on  the  Register;  or 

(4)  strike  out  any  goods  or  classes  of  goods  from  those 
for  which  a  trade  mark  is  registered;  or 

(5)  enter  a  disclaimer  or  memorandum  relating  to  a  trade 
mark  which  does  not  in  any  way  extend  the  rights  given  by  the 
existing  registration  of  such  trade  mark.    Any  decision  of  the 
Registrar  under  this  section  shall  be  subject  to  appeal  to  the 
Governor  in  Council. 

Registration  of  assignments,  etc. 

32.  Subject  to  the  provisions  of  this  Act,  where  a  person 
becomes  entitled  to  a  registered  trade  mark  by  assignment, 
transmission,  or  other  operation  of  law,  the  Registrar  shall,  on 
request  made  in  the  prescribed  manner,  and  on  proof  of  title 
to  his  satisfaction,  cause  the  name  and  address  of  such  person 
to  be  entered  on  the  Register  as  proprietor  of  the  trade  mark. 
Any  decision  of  the  Registrar  under  this  section  shall  be  sub- 
ject to  appeal  to  the  Court. 

Alteration  of  registered  trade  marks 

33.  The  registered  proprietor  of  any  trade  mark  may  ap- 
ply in  the  prescribed  manner  to  the  Registrar  for  leave  to  add 
to  or  alter  such  trade  mark  in  any  manner  not  substantially 
affecting  the  identity  of  the  same,  and  the  Registrar  may  refuse 
such  leave  or  may  grant  the  same  on  such  terms  as  he  may 
think  fit,  but  any  such  refusal  or  conditional  permission  shall 
be  subject  to  appeal  to  the  Governor  in  Council.    If  leave  be 
granted,  the  trade  mark,  as  altered,  shall  be  advertised  in  the 
prescribed  manner. 


BAHAMA  ISLANDS  59 

Rectification  of  register 

34.  Subject  to  the  provisions  of  this  Act — 

(1)  The  Court  may,  on  the  application  in  the  prescribed 
manner  of  any  person  aggrieved  by  the  non-insertion  in  or  omis- 
sion from  the  Register  of  any  entry,  or  by  any  entry  made  in 
the  Register  without  sufficient  cause,  or  by  any  entry  wrong- 
fully remaining  on  the  Register,  or  by  any  error  or  defect  in 
any  entry  in  the  Register,  make  such  order  for  making,  expung- 
ing, or  varying  such  entry,  as  it  may  think  fit. 

(2)  The  Court  may  in  any  proceeding  under  this  section 
decide  any  question  that  it  may  be  necessary  or  expedient  to 
decide  in  connection  with  the  rectification  of  the  Register. 

(3)  In  case  of  fraud  in  the  registration  or  transmission  of 
a  registered  trade  mark,  the  Registrar  may  himself  apply  to 
the  Court  under  the  provisions  of  this  section. 

(4)  Any  order  of  the  Court  rectifying  the  Register  shall 
direct  that  notice  of  the  rectification  shall  be  served  upon  the 
Registrar  in  the  prescribed  manner,  who  shall  upon  receipt  of 
such  notice  rectify  the  Register  accordingly. 

Non-user  of  trade  mark 

35.  A  registered  trade  mark  may,  on  the  application  to 
the  Court  of  any  person  aggrieved,  be  taken  off  the  Register 
in  respect  of  any  of  the  goods  for  which  it  is  registered,  on  the 
ground  that  it  was  registered  by  the  proprietor  or  a  predecessor 
in  title  without  any  bona  fide  intention  to  use  the  same  in  con- 
nection with  such  goods,  and  there  has  in  fact  been  no  bona  fide 
user  of  the  same  in  connection  therewith,  or  on  the  ground  that 
there  has  been  no  bona  fide  user  of  such  trade  mark  in  connec- 
tion with  such  goods  during  the  five  years  immediately  preced- 
ing the  application,  unless  in  either  case  such  non-user  is  shown 
to  be  due  to  special  circumstances  in  the  trade,  and  not  to  any 
intention  not  to  use  or  to  abandon  such  trade  mark  in  respect 
of  such  goods. 

EFFECT  OF  REGISTRATION 
Powers  of  registered  proprietor 

36.  Subject  to  the  provisions  of  this  Act — 

(1)  The  person  for  the  time  being  entered  in  the  Register 
as  proprietor  of  a  trade  mark  shall,  subject  to  any  rights  ap- 
pearing from  such  Register  to  be  vested  in  any  other  person, 
have  the  power  to  assign  the  same,  and  to  give  effectual  receipts 
for  any  consideration  for  such  assignment. 

(2)  Any  equities  in  respect  of  a  trade  mark  may  be  en- 
forced in  like  manner    as    in   respect  of  any  other  personal 
property. 


60  BAHAMA  ISLANDS 

Rights  of  proprietor  of  trade  mark 

37.  Subject  to  the  provisions  of  section  39  of  this  Act  and 
to  any  limitations  and  conditions  entered  upon  the  Register, 
the  registration  of  a  person  as  proprietor  of  a  trade  mark  shall, 
if  valid,  give  to  such  person  the  exclusive  right  to  the  use  of 
such  trade  mark  upon  or  in  connection  with  the  goods  in  respect 
of  which  it  is  registered.    Provided  always  that,  where  two  or 
more  persons  are  registered  proprietors  of  the  same  (or  sub- 
stantially the  same)  trade  mark  in  respect  of  the  same  goods, 
no  rights  of  exclusive  user  of  such  trade  mark  shall  (except  so 
far  as  their  respective  rights  shall  have  been  denned  by  the 
Court)  be  acquired  by  any  one  of  such  persons  as  against  any 
other  by  the  registration  thereof,  but  each  of  such  persons  shall 
otherwise  have  the  same  rights  as  if  he  were  the  sole  registered 
proprietor  thereof. 

Registration  to  be  prima  facie  evidence  of  validity 

38.  In  all  legal  proceedings  relating  to  a  registered  trade 
mark  (including  applications  under  section  34  of  this  Act)  the 
fact  that  a  person  is  registered  as  proprietor  of  such  trade 
mark  shall  be  prima  facie  evidence  of  the  validity  of  the  original 
registration  of  such  trade  mark  and  of  all  subsequent  assign- 
ments and  transmissions  of  the  same. 

Registration  to  be  conclusive  after  seven  years 

39.  In  all  legal  proceedings  relating  to  a  registered  trade 
mark  (including  applications  under  section  34  of  this  Act)  the 
original  registration  of  such  trade  mark  shall,  after  the  expira- 
tion of  seven  years  from  the  date  of  such  original  registration 
(or  seven  years  from  the  passing  of  this  Act,  whichever  shall 
last  happen),  be  taken  to  be  valid  in  all  respects  unless  such 
original  registration  was  obtained  by  fraud,  or  unless  the  trade 
mark  offends  against  the  provisions  of  section  10  of  this  Act: 
Provided  that  nothing  in  this  Act  shall  entitle  the  proprietor  of 
a  registered  trade  mark  to  interfere  with  or  restrain  the  user 
by  any  person  of  a  similar  trade  mark  upon  or  in  connection 
with  goods  upon  or  in  connection  with  which  such  person  has, 
by  himself  or  his  predecessors  in  business,  continuously  used 
such  trade  mark  from  a  date  anterior  to  the  user  of  the. first- 
mentioned  trade  mark  by  the  proprietor  thereof  or  his  prede- 
cessors in  business,  or  to  object  (on  such  user  being  proved)  to 
such  person  being  put  upon  the  Register  for  such  similar  trade 
mark  in  respect  of  such  goods  under  the  provisions  of  section 
20  of  this  Act. 

Unregistered  trade  mark 

40.  No  person  shall  be  entitled  to  institute  any  proceeding 


BAHAMA  ISLANDS  61 

to  prevent  or  to  recover  damages  for  the  infringement  of  an 
unregistered  trade  mark. 

Infringement 

41.  In  an  action  for  the  infringement  of  a  trade  mark  the 
Court  trying  the  question  of  infringement  shall  admit  evidence 
of  the  usages  of  the  trade  in  respect  to  the  get-up  of  the  goods 
for  which  the  trade  mark  is  registered,  and  of  any  trade  marks 
or  get-up  legitimately  used  in  connection  with  such  goods  by 
other  persons. 

User  of  name,  address,  or  description  of  goods 

42.  No  registration  under  this  Act  shall  interfere  with 
any  bona  fide  use  by  a  person  of  his  own  name  or  place  of  busi- 
ness or  that  of  any  of  his  predecessors  in  business,  or  the  use 
by  any  person  of  any  bona  fide  description  of  the  character  or 
quality  of  his  goods. 

"Passing  off"  action 

43.  Nothing  in  this  Act  contained  shall  be  deemed  to  affect 
rights  of  action  against  any  person  for  passing  off  goods  as 
those  of  another  person  or  the  remedies  in  respect  thereof. 

LEGAL  PROCEEDINGS 
Certificate  of  validity 

44.  In  any  legal  proceeding  in  which  the  validity  or  the 
registration  of  a  registered  trade  mark  conies  into  question  and 
is  decided  in  favour  of  the  proprietor  of  such  trade  mark,  the 
Court  may  certify  the  same,  and  if  it  so  certifies,  then  in  any 
subsequent  legal  proceeding  in  which  such  validity  comes  into 
question  the  proprietor  of  the  said  trade  mark,  on  obtaining 
a  final  order  or  judgment  in  his  favour,  shall  have  his  full  costs, 
charges  and  expenses  as  between  attorney  and  client,  unless  in 
such  subsequent  proceedings  the  Court  certifies  that  he  ought 
not  to  have  the  same. 

Registrar  to  have  notice  of  proceeding  for  rectification 

45.  In  any  legal  proceeding  in  which  the  relief  sought  in- 
cludes alteration  or  rectification  of  the  Register,  the  Registrar 
shall  have  the  right  to  appear  and  be  heard,  and  shall  appear 
if  so  directed  by  the  Court.    Unless  otherwise  directed  by  the 
Court,  the  Register,  in  lieu  of  appearing  and  being  heard,  may 
submit  to  the  Court  a  statement  in  writing  signed  by  him,  giving 
particulars  of  the  proceedings  before  him  in  relation  to  the  mat- 
ter in  issue,  or  of  the  grounds  of  any  decision  given  by  him 
affecting  the  same  or  of  the  practice  of  the  Office  in  like  cases, 
or  of  such  other  matters  relevant  to  the  issues,  and  within  his 
knowledge  as  such  Registrar,  as  he  shall  think  fit,  and  such 
statement  shall  be  deemed  to  form  part  of  the  evidence  in  the 


62  BAHAMA  ISLANDS 

proceeding. 

COSTS 
Costs  of  proceedings  before  the  Court 

46.  In  all  proceedings  before  the  Court  under  this  Act  the 
costs  of  the  Registrar  shall  be  in  the  discretion  of  the  Court, 
but  the  Registrar  shall  not  be  ordered  to  pay  the  costs  of  any 
other  of  the  parties. 

EVIDENCE 
Mode  of  giving  evidence 

47.  In  any  proceeding  under  this  Act  before  the  Governor 
in  Council  or  the  Registrar,  the  evidence  shall  be  given  by  no- 
tarial declaration  in  the  absence  of  directions  to  the  contrary, 
but  in  any  case  in  which  it  shall  think  right  so  to  do,  the  tribunal 
may  (with  the  consent  of  the  parties)  take  evidence  viva  voce 
in  lieu  of  or  in  addition  to  evidence  by  declaration.    Any  such 
notarial  declaration  may  in  the  case  of  appeal  be  used  before 
the  Court  in  lieu  of  evidence  by  affidavit,  but  if  so  used  shall 
have  all  the  incidents  and  consequences  of  evidence  by  affidavit. 

In  case  any  part  of  the  evidence  is  taken  viva  voce,  the 
Governor  in  Council  or  the  Registrar  shall  in  respect  of  requir- 
ing the  attendance  of  witnesses  and  taking  evidence  on  oath  be 
in  the  same  position  in  all  respects  as  the  Court. 

Sealed  copies  to  be  evidence 

48.  Printed  or  written  copies  or  extracts  of  or  from  the 
Register,  purporting  to  be  certified  by  the  Registrar  and  sealed 
with  the  Seal  of  the  Office,  shall  be  admitted  in  evidence  in  all 
proceedings  without  further  proof  or  production  of  the  originals. 

Certificate  of  Registrar  to  be  evidence 

49.  A  certificate  purporting  to  be  under  the  hand  of  the 
Registrar  as  to  any  entry,  matter,  or  thing  which  he  is  author- 
ized by  this  Act,  or  rules  made  thereunder,  to  make  or  do,  shall 
be  prima  facie  evidence  of  the  entry  having  been  made,  and  of 
the  contents  thereof,  and  of  the  matter  or  thing  having  been 
done  or  not  done. 

PART  II 

POWEBS  AND  DUTIES  OF  REGISTRAR  OF  TRADE  MARKS 
Exercise  of  discretionary  power  by  Registrar 

50.  Where  any  discretionary  or  other  power  is  given  to 
the  Registrar  by  this  Act  or  rules  made  thereunder,  he  shall  not 
exercise  that  power  adversely  to  the  applicant  for  registration 
or  the  registered  proprietor  of  the  trade  mark  in  question  with- 
out (if  duly  required  so  to  do  within  the  prescribed  time)  giving 


BAHAMA  ISLANDS  63 

such  applicant  or  registered  proprietor  an  opportunity  of  being 
heard. 

Appeal  from  Registrar 

51.  Except  where  expressly  given  by  the  provisions  of  this 
Act  or  rules  made  thereunder,  there  shall  be  no  appeal  from  a 
decision  of  the  Registrar  otherwise  than  to  the  Governor  in 
Council,  but  the  Court,  in  dealing  with  any  question  of  the  rec- 
tification of  the  Register  (including  all  applications  under  the 
provisions  of  section  34  of  this  Act)  shall  have  power  to  review 
any  decision  of  the  Registrar  relating  to  the  entry  in  question 
or  the  correction  sought  to  be  made. 

Recognition  of  agents 

52.  Where  by  this  Act  any  act  has  to  be  done  by  or  to  any 
person  in  connection  with  a  trade  mark  or  proposed  trade  mark 
or  any  procedure  relating  thereto,  such  act  may  under  and  in 
accordance  with  rules  made  under  this  Act  or  in  particular  cases 
by  special  leave  of  the  Governor  in  Council  be  done  by  or  to 
an  agent  of  such  party  duly  authorized  in  the  prescribed  manner. 

Registrar  may  take  directions  of  Law  Officer 

53.  The  Registrar  may,  in  any  case  of  doubt  or  difficulty 
arising  in  the  administration  of  any  of  the  provisions  of  this 
Act,  apply  to  the  Attorney  General  for  directions  in  the  matter. 

POWER  AND  DUTIES  OF  THE  GOVERNOR  IN  COUNCIL 
Power  of  Governor  in  Council  to  make  rules 

54.  (i)  Subject  to  the  provisions  of  this  Act  the  Governor 
in  Council  may  from  time  to  time  make  such  rules,  prescribe 
such  forms,  and  generally  do  such  things  as  may  be  thought 
expedient — 

(a)  for  regulating  the  practice  under  this  Act: 

(b)  for  classifying  goods  for  the  purposes  of  registration 
of  trade  marks : 

(c)  for  making  or  requiring  duplicates  of  trade  marks  and 
other  documents : 

(d)  for  securing  and  regulating  the  publishing  and  selling 
or  distributing,  in  such  manner  as  the  Governor  in  Council  think 
fit,  of  copies  of  trade  mark  and  other  documents : 

(e)  generally  for  regulating  the  business  of  the  office  in  re- 
lation to  trade  marks  and  all  things  by  this  Act  placed  under 
the  direction  or  control  of  the  Registrar  or  of  the  Governor  in 
Council. 

(ii)  Before  making  any  rules  under  this  section  the  Gover- 
nor in  Council  shall  publish  notice  of  the  intention  to  make  the 
rules  and  of  the  place  where  copies  of  the  draft  rules  may  be 
obtained  in  such  manner  as  he  may  consider  most  expedient,  so 


64  BAHAMA  ISLANDS 

as  to  enable  persons  affected  to  make  representations  to  the 
Governor  in  Council  before  the  rules  are  finally  settled. 

(iii)  Any  rules  made  in  pursuance  of  this  section  shall  be 
forthwith  advertised  in  the  Official  Newspaper. 

FEES 

55.  (1)  There  shall  be  paid  in  respect  of  applications  and 
registration  and  other  matters  under  this  Act  such  fees  as  may 
be  prescribed  by  the  Governor  in  Council. 

(ii)  All  fees  prescribed  at  any  time  under  this  section  shall 
continue  in  force  until  the  end  of  the  next  session  of  the  Legis- 
lature, or  if  the  Legislature  is  at  the  time  in  session,  until  the 
end  of  the  session  then  proceeding  and  shall  thereafter  continue 
in  force  unless  the  Legislature  shall  otherwise  determine. 

SPECIAL  TRADE  MARKS 
Standardisation,  &c.,  trade  marks 

56.  Where  any  association  or  person  undertakes  the  exam- 
ination  of  any  goods  in  respect  of  origin,  material,  mode  or 
manufacture,  quality,  accuracy  or  other  characteristic,  and  cer- 
tifies the  result  of  such  examination  by  mark  used  upon  or  in 
connection  with  such  goods,  the  Governor  in  Council  may,  if  he 
shall  judge  it  to  be  to  the  public  advantage,  permit  such  associa- 
tion or  person  to  register  such  mark  as  a  trade  mark  in  respect 
of  such  goods,  whether  or  not  such  association  or  person  be  a 
trading  association  or  trader  or  possessed  of  a  goodwill  in  con- 
nection with  such  examination  and  certifying.    When  so  regis- 
tered such  trade  mark  shall  be  deemed  in  all  respects  to  be  a 
registered  trade  mark,  and  such  association  or  person  to  be  the 
proprietor  thereof,  save  that  such  trade  mark  shall  be  trans- 
missible or  assignable  only  by  permission  of  the  Governor  in 
Council. 


Falsification  of  entries  in  register 

57.  If  any  person  makes  or  causes  to  be  made  a  false  entry 
in  the  Register  kept  under  this  Act,  or  a  writing  falsely  pur- 
porting to  be  a  copy  of  an  entry  in  any  such  Register,  or  pro- 
duces or  tenders  or  causes  to  be  produced  or  tendered  in  evi- 
dence any  such  writing  knowing  the  entry  or  writing  to  be  false, 
he  shall  be  guilty  of  an  offence  against  this  Act. 

Penalty  on  falsely  representing  a  trade  mark 

58.  (i)  Any  person  who  represents  a  trade  mark  as  regis- 
tered which  is  not  so  shall  be  liable  for  every  offence,  on  sum- 
mary conviction,  to  a  fine  not  exceeding  five  pounds. 

(ii)  A  person  shall  be  deemed,  for  the  purposes  of  this 
enactment,  to  represent  that  a  trade  mark  is  registered  if  he 


BAHAMA  ISLANDS  65 

uses  in  connection  with  the  trade  mark  the  word  ''registered" 
or  any  words  expressing  or  implying  that  registration  has  been 
obtained  for  the  trade  mark. 

Right  to  register  trade  mark  registered  in  England 

59.  Subject  to  any  prior  rights  that  may  have  been  ac- 
quired by  any  local  proprietor  of  a  trade  mark,  the  proprietor 
of  any  trade  mark  registered  in  England  shall  be  entitled  to 
the  registration  of  such  trade  mark  in  the  Colony,  upon  the  pro- 
duction of  a  certificate  of  the  registration  of  such  trade  mark 
in  England  under  the  hand  of  the  Comptroller  General  of  pat- 
ents, designs  and  trade  marks. 

PAET  III 

PROTECTION  OP  TRADE  MARKS 
Forging  or  falsely  applying  trade  marks 

60.  Every  person  who — 

(a)  forges  any  trade  mark;  or 

(b)  falsely  applies  to  goods  any  trade  mark  or  any  mark 
so  nearly  resembling  a  trade  mark  as  to  be  calculated  to  deceive ; 
shall,  unless  he  proves  that  he  acted  without  intent  to  defraud, 
be  guilty  of  an  offence  against  this  Act. 

Selling  goods  to  which  false  trade  mark  applied 

61.  Every  person  who  sells,  or  exposes  for  sale,  or  has  in 
his  possession  for  sale,  or  any  purpose  of  trade  or  manufacture, 
any  goods  or  things  to  which  any  forged  trade  mark  is  applied, 
or  to  which  any  trade  mark  or  mark  so  nearly  resembling  a 
trade  mark  as  to  be  calculated  to  deceive  is  falsely  applied,  as 
the  case  may  be,  shall  be  guilty  of  an  offence  against  this  Act, 
unless  he  proves — 

(a)  that  having  taken  all  reasonable  precautions  against 
committing  an  offence  against  this  Act,  he  had  at  the  time  of 
the  commission  of  the  alleged  offence  no  reason  to  suspect  the 
genuineness  of  the  trade  mark;  and 

(b)  that  on  demand  made  by  or  on  behalf  of  the  prosecutor 
he  gave  all  the  information  in  his  power  with  respect  to  the 
persons  from  whom  he  obtained  such  goods  or  things ;  or 

(c)  that  otherwise  he  acted  innocently. 

Forging  trade  marks 

62.  A  person  shall  be  deemed  to  forge  a  trade  mark  who 
either — 

(a)  without  the  assent  of  the  proprietor  of  the  trade  mark 
makes  that  trade  mark  or  a  mark  so  nearly  resembling  that 
trade  mark  as  to  be  calculated  to  deceive ;  or 

(b)  falsifies  any  genuine  trade  mark,  whether  by  alteration, 


66  BAHAMA  ISLANDS 

addition,  effacement  or  otherwise; 

Any  trade  mark  or  mark  so  made  or  falsified  is  in  this  Act  re- 
ferred to  as  a  forged  trade  mark; 

Provided  that  in  any  prosecution  for  forging  a  trade  mark  the 
burden  of  proving  assent  of  the  proprietor  shall  lie  on  the 
defendant. 

Applying  trade  marks 

63.  (i)  A  person  shall  be  deemed  to  apply  a  trade  mark 
or  mark  to  goods  who — 

(a)  applies  it  to  the  goods  themselves ;  or 

(b)  applies  it  to  any  covering,  label,  reel  or  other  thing  in 
or  with  which  the  goods  are  sold  or  exposed  or  had  in  possession 
for  any  purpose  of  sale,  trade  or  manufacture ;  or 

(c)  places,  encloses,  or  annexes  any  goods  which  are  sold 
or  exposed  or  had  in  possession  for  any  purpose  of  sale,  trade 
or  manufacture,  in,  with,  or  to  any  covering,  label,  reel  or  other 
thing  to  which  a  trade  mark  has  been  applied ;  or 

(d)  uses  a  trade  mark  or  mark  in  any  manner  calculated 
to  lead  to  the  belief  that  the  goods  in  connection  with  which  it 
is  used  are  designated  by  that  trade  mark  or  mark. 

(ii)  A  trade  mark  or  mark  shall  be  deemed  to  be  applied 
whether  it  is  woven,  impressed  or  otherwise  worked  into  or  an- 
nexed or  affixed  to  the  goods,  or  to  any  covering,  label,  reel  or 
other  thing. 

Falsely  applying  trade  marks 

64.  A  person  shall  be  deemed  falsely  to  apply  to  goods  a 
trade  mark  or  mark  who,  without  the  consent  of  the  proprietor 
of  a  trade  mark,  applies  such  trade  mark,  or  a  mark  so  nearly 
resembling  it  as  to  be  calculated  to  deceive,  but  in  any  prosecu- 
tion for  falsely  applying  a  trade  mark  or  mark  to  goods  the 
burden  of  proving  the  assent  of  the  proprietor  shall  lie  on  the 
defendant. 

Protection  of  servants  acting  in  good  faith 

65.  Nothing  in  this  Act  shall  be  construed  so  as  to  render 
liable  to  any  prosecution  or  punishment  any  servant  of  a  master 
resident  in  the  Colony  who  acts  in  good  faith  in  obedience  to 
the  instructions  of  such  master,  and  on  demand  made  on  behalf 
of  the  prosecutor  has  given  full  information  as  to  his  master. 

Punishment  of  offence  against  Act 

66.  Any  person  guilty  of  an  offence  against  this  Act  shall 
be  liable  on  summary  conviction  to  a  penalty  not  exceeding  £50 
and  to  the  forfeiture  of  all  goods  in  respect  of  which  the  offence 
was  committed. 


BARBADOS 

MERCHANDISE  MARKS  (AMENDMENT)  ACT,  1896-7 

AN  ACT  TO  AMEND  THE  MERCHANDISE  MARKS  ACT,  1889 

(20  March,  1896.) 

Whereas  it  is  expedient  to  provide  for  the  registration  of 
trade  marks  in  this  island  and  to  extend  the  protection  now 
afforded  by  the  Merchandise  Marks  Act,  1889,*  to  certain  trade 
marks  therein  mentioned  to  trade  marks  to  be  registered  in  this 
island;  Be  it  therefore  enacted  by  the  Governor,  Council,  and 
Assembly  of  this  island,  and  by  the  authority  of  the  same,  as 
follows : 

Meaning  of  term  trade  mark 

1.  The  expression ' '  trade  mark"  in  the  Merchandise  Marks 
Act,  1889  (hereinafter  referred  to  as  the  principal  Act),  shall 
from  and  after  the  passing  of  this  Act  mean  also  in  addition  to 
the  meaning  given  hereto  in  section  three  of  the  principal  Act 
a  trade  mark  registered  in  the  register  of  trade  marks  directed 
to  be  kept  under  this  Act. 

Register  of  trade  marks 

2.  A  register  of  trade  marks  to  be  registered  under  this 
Act  and  of  the  proprietors  thereof  shall  be  kept  at  the  record 
branch  of  the  colonial  secretary's  office  of  this  island,  and  under 
the  superintendence  of  the  colonial  secretary  of  this  island,  and 
after  the  amalgamation  of  that  branch  with  the  prothonotary's 
office,  then  such  register  shall  be  kept  under  the  superintendence 
of  the  registrar  appointed  under  the  Registration  Office  Act, 
1887,  and  the  term  "registrar"  used  in  this  Act  shall  apply 
to  such  colonial  secretary  or  registrar  as  the  case  may  be,  and 
such  register  shall  be  called  "the  Register  of  Barbados  Trade 
Marks." 

Entries  in  register 

3.  There  shall  be  entered  in  the  register  of  Barbados  trade 
marks  a  description  of  registered  trade  marks  and  the  names 
and  addresses  of  the  proprietors  thereof  with  notifications  of 
any  assignments  or  transmission  thereof. 

Application  for  registration 

4.  The  registrar  shall,  on  the  application  by  or  on  behalf 
of  any  person  claiming  to  be  the  proprietor  of  a  trade  mark 

*Substantially  the  same  as  Great  Britain :   Merchandise  Marks  Act,  which  see. 


68  BARBADOS 

now  used  or  desired  hereafter  to  be  used  in  this  island,  register 
the  trade  mark,  but  the  person  making  such  application  shall 
in  his  application  for  registration  state  that  such  trade  mark 
is  not  a  trade  mark  as  defined  by  section  three  of  the  principal 
Act,  and  if  after  registration  of  such  trade  mark  the  registrar 
shall  be  satisfied  that  such  trade  mark  was  at  the  time  of  such 
application  or  has  since  become  a  trade  mark  as  defined  by  sec- 
tion three  of  the  principal  Act,  he  shall  erase  such  trade  mark 
and  the  name  of  the  proprietor  thereof  out  of  the  register,  and 
such  erasipn  shall  relate  back  to  the  time  when  such  trade  mark 
came  within  the  definition  aforesaid  and  such  erasion  shall  take 
place  whether  such  trade  mark  came  within  such  definition  be- 
fore or  after  such  registration  and  whether  the  proprietor 
thereof  is  the  same  as  the  registered  proprietor  or  any  other 
person  or  persons. 

Form  of  application 

5.  The  application  for  registration  must  be  made  in  the 
form  set  forth  in  the  schedule  to  this  Act  and  must  be  left  at 
the  office  of  the  registrar. 

Condition  of  registration 

6.  (1)  The  application  for  registration  must  be  accom- 
panied by  a  representation  of  the  trade  mark. 

(2)  For  the  purposes  of  this  Act  a  trade  mark  must  consist 
of  or  contain  at  least  one  of  the  following  essential  particulars : 

(a)  A  name  of  an  individual  or  firm  printed,  impressed, 
woven  or  blown  in  glass;  or 

(b)  A  written  signature  or  copy  of  a  written  signature  of 
the  individual  or  firm  applying  for  registration  thereof  as  a 
trade  mark ;  or 

(c)  A  distinctive  device,  mark,  brand,  heading,  label,  ticket 
or  fancy  word  or  words  not  in  common  use. 

(3)  There  may  be  added  to  any  one  or  more  of  these  par- 
ticulars any  letters,  words  or  figures  or  combination  of  letters, 
words  or  figures,  or  any  of  them. 

Connection  of  trade  mark  with  goods 

7.  A  trade  mark  must  be  registered  for  particular  goods 
or  classes  of  goods. 

Colour  of  trade  mark 

8.  A  trade  mark  may  be  registered  in  any  colour  and  such 
registration  shall  (subject  to  the  provisions  of  this  Act)  confer 
on  the  registered  owner  the  exclusive  right  to  use  the  same  in 
that  or  any  other  colour. 

Advertisement  of  application 

9.  On  receipt  of  an  application  for  registration  the  regis- 


BARBADOS  69 

trar  shall  advertise  in  the  Official  Gazette  and  one  of  the  news- 
papers of  this  island  a  notice  in  the  form  set  forth  in  the  schedule 
of  this  Act,  and  such  notice  shall  be  advertised  in  three  consecu- 
tive numbers  of  the  Official  Gazette  and  such  newspaper,  but  the 
registrar  shall  not  insert  such  advertisement  till  the  person  mak- 
ing the  application  shall  deposit  with  the  registrar  the  sums  to 
be  charged  by  the  Official  Gazette  and  such  newspaper  for  in- 
serting such  advertisement. 

Opposition  to  registration 

10.  (1)  If  no  notice  of  opposition  to  the  registration  of 
such  trade  mark  shall  be  left  with  the  registrar  at  his  office 
within  one  month  of  the  first  advertisement  of  the  application 
in  the  Official  Gazette,  then  the  registrar  shall  register  such 
trade  mark  in  the  name  of  the  person  by  or  on  behalf  of  whom 
such  application  is  made. 

(2)  Any  person  may  within  one  month  of  the  first  adver- 
tisement of  the  application  give  notice  in  duplicate  at  the  office 
of  the  registrar,  of  opposition  to  the  registration  of  the  trade 
mark,  and  the  registrar  shall  send  one  copy  of  such  notice  to 
the  applicant. 

(3)  Within  fourteen  days  after  receipt  of  such  notice  the 
applicant  may  send  to  the  registrar  at  his  office  a  counter-state- 
ment in  duplicate  of  the  grounds  on  which  he  relies  for  his  ap- 
plication, and  if  he  does  not  do  so  shall  be  deemed  to  have 
abandoned  his  application. 

(4)  If  the  applicant  send  such  counter-statement  the  regis- 
trar shall  furnish  a  copy  thereof  to  the  persons  who  gave  notice 
of  opposition  and  shall  require  him  to  give  security  in  such 
manner  and  to  such  amount  as  the  registrar  may  require  for 
such  costs  as  may  be  awarded  in  respect  of  such  opposition,  and 
if  such  security  is  not  given  within  fourteen  days  after  such 
requirement  was  made  the  opposition  shall  be  deemed  to  be 
withdrawn  and  the  registrar  shall  register  such  trade  mark  in 
the  name  of  the  person  by  or  on  behalf  of  whom  such  applica- 
tion is  made. 

(5)  If  the  person  who  gave  notice  of  opposition  duly  gives 
such  security  as  aforesaid,  the  registrar  shall  inform  the  ap- 
plicant thereof  in  writing  and  thereupon  the  case  shall  be  deemed 
to  stand  over  till  the  same  has  been  decided  by  some  court  of 
law  or  equity. 

Conflicting  claims  to  registration 

11.  Where  each  of  several  persons  claims  to  be  registered 
as  proprietor  of  the  same  trade  mark,  the  register  shall  refuse 
to  register  any  of  them  until  their  rights  have  been  determined 


70  BARBADOS 

according  to  law. 

Restrictions  on  registration 

12.  Except  where  a  court  of  law  or  equity  has  decided  that 
two  or  more  persons  are  entitled  to  be  registered  as  proprietors 
of  the  same  trade  mark,  the  registrar  shall  not  register  in  re- 
spect of  the  same  goods  or  a  description  of  goods  a  trade  mark 
identical  with  the  one  already  on  the  register  with  respect  to 
such  goods  or  description  of  goods. 

(2)  The  registrar  shall  not  register  with  respect  to  the 
same  goods  or  description  of  goods  a  trade  mark  so  nearly  re- 
sembling a  trade  mark  already  on  the  register  with  respect  to 
such  goods  or  description  of  goods  as  to  be  calculated  to  deceive. 

(3)  It  shall  not  be  lawful  to  register  as  part  of  or  in  com- 
bination with  a  trade  mark  any  words  the  exclusive  use  of  which 
would  by  reason  of  their  being  calculated  to  deceive  or  other- 
wise be  deemed  disentitled  to  protection  in  a  court  of  justice, 
or  any  scandalous  design. 

Assignment  and  transmission  of  trade  mark 

13.  A  trade  mark  when  registered  shall  be  assigned  and 
transmitted  only  in  connection  with  the  goodwill  of  the  business 
concerned  in  the  particular  goods  or  classes  of  goods  for  which 
it  has  been  registered  and  shall  be  determinable  with  that  good- 
will. 

Registration  of  assignment 

14.  The  assignment  or  transmission  of  every  registered 
trade  mark  shall  be  entered  on  the  register  by  the  person  claim- 
ing under  transmission  or  assignment  and  such  person  shall  not 
be  entitled  to  the  protection  afforded  by  this  Act  till  such  entry 
shall  be  made. 

Fees 

15.  There  shall  be  paid  under  this  Act  the  fees  mentioned 
in  the  schedule  thereto,  and  while  the  present  prothonotary  of 
the  court  of  common  pleas  shall  be  registrar,  such  fees  shall  be 
paid  to  him  for  his  own  use,  but  after  the  registrar  under  this 
Act  shall  be  the  registrar  under  the  Registration  Office  Act, 
1887,  then  such  fees  shall  be  paid  to  the  registrar  to  be  paid 
by  him  into  the  public  treasury  to  the  credit  of  the  general 
revenue  and  the  duties  imposed  by  this  Act  on  the  registrar  to 
be  appointed  under  the  Registration  Office  Act,  1887,  shall  be 
considered  as  part  of  the  duties  for  the  performance  of  which 
he  is  appointed  and  shall  not  entitle  him  to  any  increase  of 
salary. 

Construction  of  Act 

16.  This  Act  and  the  principal  Act  shall  be  read  and  con- 
strued as  one  Act. 


BARBADOS  71 

SCHEDULE 

FORM  OF  APPLICATION  OF  TRADE  MARK 
To  the  Registrar  of  Trade  Marks: 

You  are  hereby  requested  to  register  the  accompanying 
trade  mark  in  connection  with  in  the  name  of 

who  claims  to  be  the  proprietor  thereof. 

This  trade  mark  is  not  a  trade  mark  as  defined  by  section  three 
of  the  Merchandise  Marks  Act,  1889. 

Dated  this  day  of  ,  18 

(Signed) 


BASUTOLAND 

PROCLAMATION  (NO.  46  OF  1921) 

BY  His  ROYAL  HIGHNESS  THE  HIGH  COMMISSIONER 
Whereas  it  is  expedient  to  make  provision  for  the  regis- 
tration in  Basutoland  of  the  proprietors  of  trade  marks  within 
the  Union  of  South  Africa  and  for  the  conferring  on  such  per- 
sons certain  rights  in  Basutoland; 

Now  therefore  under  and  by  virtue  of  the  powers  in  me 
vested  I  do  hereby  declare,  proclaim,  and  make  known  as 
follows : — 

1.  The  Resident  Commissioner  shall  cause  to  be  kept  at 
Maseru  or  such  other  place  as  may  be  designated  by  him  by 
notice  in  the  Gazette  a  register  of  trade  marks  wherein  shall  be 
entered — 

(a)  the  names  and  addresses  of  persons  entitled  to  cer- 
tificates under  this  Proclamation; 

(b)  notifications  of  assignments  and  transmissions  of  rights 
granted  under  this  Proclamation;  and 

(c)  particulars  of  such  other  matters  as  may  be  required. 

2.  Any  person  being  registered  in  the  Register  of  Trade 
Marks  of  the  Union  of  South  Africa  under  Act  No.  9  of  1916 
or  any  amendment  thereof  as  the  proprietor  of  a  trade  mark 
may  on  production  of  the  certificate  of  registration  of  such  trade 
mark  accompanied  by  the  prescribed  number  of  representations 
thereof  and  on  payment  of  the  fee  prescribed  be  registered  in 
the  Register  of  Trade  Marks  to  be  kept  under  section  one  of 
this  Proclamation,  and  a  certificate  of  such  registration  shall 
thereupon  be  issued  to  him  by  the  Resident  Commissioner. 

3.  Any  person  registered  under  section  two  shall  so  long 
as  the  registration  of  the  trade  mark  in  respect  of  which  he  is 
registered  remains  in  force  in  the  Union  of  South  Africa  and 
so  long  as  he  is  the  proprietor  thereof  have  and  enjoy  in 
Basutoland  the  same  rights  and  privileges  and  be  subject  to  the 
same  duties,  obligations  and  conditions  as  have  been  conferred 
or  imposed  upon  him  by  the  registration  of  the  said  trade  mark 
within  the  Union  of  South  Africa. 

4.  The  name  of  any  person  registered  under  this  Procla- 
mation as  proprietor  of  a  trade  mark  may  be  removed  from  the 
Register  by  written  order  of  the  Resident  Commissioner — 

(a)  if  the  registration  of  the  trade  mark  in  respect  of  which 
he  was  so  registered  has  been  revoked  or  if  the  period  of  such 


BASUTOLAND  73 

registration  has  expired  by  effluxion  of  time  or  has  been  trans- 
ferred; and 

(b)  if  any  license  fees  which  may  be  prescribed  for  the 
renewal  of  registration  are  not  duly  paid. 
Provided  that  before  the  name  of  any  person  is  so  removed 
written  notice  shall  be  served  on  him  at  his  registered  address 
if  it  is  within  Basutoland  or  sent  to  such  address  by  registered 
post  if  it  be  outside  Basutoland,  calling  upon  him  to  show  cause 
within  a  time  to  be  specified  therein  why  his  name  should  not 
be  removed. 

5.  Notice  shall  be  given  to  the  Resident  Commissioner  of 
any  assignment  of  a  trade  mark  in  respect  of  which  any  person 
is  registered  as  proprietor  under  this  Proclamation  and  of  any 
amendment  or  extension  of  the  period  of  registration  of  such 
trade  mark,  and  the  Resident  Commissioner  on  being  satisfied 
that  such  assignment,  amendment  or  extension  has  been  duly 
registered  in  the  Trade  Marks  Register  of  the  Union  of  South 
Africa  and  on  payment  of  the  prescribed  fee  shall  cause  an 
entry  to  be  made  accordingly  in  the  Trade  Marks  Register  kept 
under  this  Proclamation  and  in  the  case  of  assignment  shall 
issue  to  the  assignee  a  certificate  of  registration  as  proprietor. 

6.  In  any  action  which  may  be  brought  for  infringement 
of  the  rights  granted  under  this  Proclamation  any  ground  upon 
which  the  name  of  the  person  by  whom  or  in  whose  right  the 
action  is  brought  could  be  removed  from  the  register  may  be 
applied  by  way  of  defence. 

7.  The  fees  set  forth  in  the  schedule  to  this  Proclamation 
shall  be  due  and  payable  for  the  several  acts  therein  specified, 
and  such  fees  shall  be  collected  by  means  of  revenue  stamps  to 
be  affixed  to  the  document  in  respect  of  which  any  such  act 
may  be  done. 

8.  This  Proclamation  may  be  cited  as  the   Basutoland 
Trade  Marks  Registration  Proclamation,  1921,  and  shall  have 
force  and  take  effect  from  the  first  day  of  October,  1921. 


BELGIUM 

LAW  OF  APRIL  1, 1879 

ARTICLE  1.  There  shall  be  considered  as  a  mark  of  manu- 
facture or  of  commerce  any  sign  serving  to  distinguish  the 
products  of  an  industry,  or  the  objects  of  commerce. 

There  may  serve  as  a  mark  in  the  distinctive  form  that  is 
given  to  it  by  the  interested  party,  the  name  of  a  person,  as 
well  as  the  corporate  name  of  a  house  of  commerce  or  of 
industry. 

ART.  2.  No  person  may  pretend  to  the  exclusive  use  of 
a  mark,  unless  he  has  deposited  the  facsimile  thereof  in  tripli- 
cate, with  the  electrotype  of  his  mark,  with  the  Clerk  of  the 
Tribunal  of  Commerce  in  the  district  in  which  his  establishment 
is  situated. 

ART.  3.  He  who  has  first  made  use  of  a  mark  alone  may 
effect  the  deposit  thereof. 

ART.  4.  The  act  of  deposit  shall  be  recorded  in  a  special 
Register  and  signed  by  the  applicant  or  his  attorney  as  well  as 
by  the  Clerk:  the  power  of  attorney  shall  be  annexed  to  the 
act.  This  shall  indicate  the  day  and  hour  of  the  deposit.  It 
shall  indicate  the  class  of  commerce  or  industry  for  which  the 
applicant  has  intention  to  avail  himself  of  the  mark. 

A  certificate  of  the  act  of  deposit  shall  be  delivered  to  the 
applicant. 

Another  certificate  shall  be  transmitted,  within  eight  days, 
with  one  of  the  facsimiles  deposited  and  the  electrotype  of  the 
mark,  to  the  Central  Administration,  on  the  responsibility  of 
which  the  announcement  of  the  deposit,  the  description,  and  the 
drawing  of  the  mark  shall  be  published  in  a  special  volume,  six 
months  at  most  after  the  receipt  of  the  remittance. 

ART.  5.  There  shall  be  paid  for  each  mark  deposited  a 
fee  of  ten  francs. 

The  deposit  shall  not  be  received  save  on  the  production  of 
a  receipt  evidencing  the  payment  of  the  tax. 

ART.  6.  Foreigners  that  exploit  industrial  or  commer- 
cial establishments  in  Belgium  shall  enjoy,  for  the  products  of 
these  establishments,  the  benefit  of  the  present  law,  on  ful- 
filling the  formalities  that  it  prescribes. 

The  same  is  true  of  foreigners  or  Belgians  that  exploit  out- 
side of  Belgium  their  industry  or  their  commerce,  if  in  the  coun- 
tries where  their  establishments  are  situated,  international  con- 
ventions have  stipulated  reciprocity  for  Belgian  marks. 

In  this  latter  case,  the  deposit  of  marks  shall  be  effected 


BELGIUM  75 

with  the  Clerk  of  the  Tribunal  of  Commerce  of  Brussels. 

ART.  7.  A  mark  may  not  be  transferred  except  with  the 
establishment  whose  objects  of  manufacture  or  of  commerce 
it  serves  to  distinguish. 

Every  transfer  of  mark  by  act  inter  vivos  shall  be  regis- 
tered at  a  fixed  fee  of  ten  francs. 

The  transfer  shall  be  effective,  with  regard  to  third  parties, 
only  after  the  deposit  of  an  extract  of  the  act  that  evidences  it, 
under  the  formalities  prescribed  for  the  deposit  ®f  the  mark. 

ART.  8.  There  shall  be  punished  by  imprisonment  of  from 
eight  days  to  six  months  and  by  a  fine  of  from  26  to  2,000  francs, 
or  by  one  of  these  two  penalties  alone : 

(a)  Those  who  have  counterfeited  a  mark  and  those  who 
have  fraudulently  made  use  of  a  counterfeit  mark; 

(b)  Those  who  fraudulently  have  affixed  or  cause  to  appear 
by  addition,  subtraction  or  by  any  alteration  whatsoever,  upon 
the  product  of  their  industry  or  the  objects  of  their  commerce, 
a  mark  belonging  to  another ; 

(c)  Those  who  have  knowingly  sold,  placed  on  sale  or  in 
circulation  products  provided  with  a  counterfeit  or  fraudulently 
affixed  mark. 

ART.  9.  There  shall  be  punished  as  authors  of  the  crimes 
foreseen  in  the  preceding  article : 

Those  who  shall  have  committed  them,  or  who  shall  have 
directly  co-operated  in  their  commission ; 

Those  who  through  any  fact  whatever  shall  have  lent  for 
the  commission  aid  such  that,  without  their  assistance,  the  crime 
would  not  have  been  possible  of  being  committed ; 

Those  who,  through  gifts,  promises,  threats,  abuse  of 
authority  or  power,  guilty  machinations  or  artifices,  shall  have 
directly  provoked  such  crime. 

ART.  10.  He  may  be  condemned  to  imprisonment  of  one 
year  and  a  fine  of  4,000  francs,  or  to  one  of  these  penalties 
only,  who  shall  have  committed  one  of  the  crimes  foreseen  by 
Art.  8  during  the  five  years  that  shall  follow  prior  condem- 
nation pronounced  through  application  of  the  same  article. 

ART.  11.  If  there  exist  attenuating  circumstances,  the 
penalties  of  imprisonment  and  of  fine  pronounced  in  virtue  of 
Art.  8  may,  respectively,  be  reduced  to  less  than  8  days  and 
less  than  26  francs,  without  the  possibility  of  their  being  less 
than  the  penalties  for  misdemeanors. 

ART.  12.  There  may  be  confiscated,  wholly  or  in  part, 
goods  bearing  a  counterfeit  or  fraudulently  affixed  mark,  as  well 
as  the  instruments  and  utensils  having  specially  served  to  com- 
mit the  crime,  if  the  guilty  party  is  the  proprietor  thereof. 


76  BELGIUM 

The  objects  confiscated  may  be  awarded  to  the  complainant 
who  shall  have  constituted  himself  the  plaintiff,  on  account  or 
in  compensation  of  his  damages. 

The  court  may  order,  in  all  cases,  the  destruction  of  the 
counterfeit  marks. 

ART.  13.  The  court  may  order  that  the  judgment  be  posted 
in  places  that  it  shall  designate  and  inserted  in  its  entirety  or  in 
excerpt  in  journals  that  it  shall  indicate,  all  at  the  expense  of 
the  guilty  party. 

ART.  14.  Public  action  may  be  lodged  only  on  complaint 
of  the  injured  party. 

ART.  15.  The  dispositions  of  the  Law  of  March  25,  1876, 
regarding  competence  in  matters  of  contention,  shall  be  ap- 
plicable to  a  civil  action  relative  to  the  use  of  marks,  when  this 
action  is  prosecuted  apart  from  public  action. 

ART.  16.  The  deposit  of  a  mark  made  in  contravention 
of  the  dispositions  of  the  present  law  shall  be  declared  null  on 
petition  of  any  party  interested. 

The  judgment  that  pronounces  nullity  shall  be  mentioned 
on  the  margin  of  the  act  of  deposit,  after  it  shall  have  acquired 
the  effect  of  res  adjudicata. 

ART.  17.  There  shall  be  abrogated  the  dispositions  at 
present  in  force  regarding  trade  marks,  and  in  particular  the 
Order  of  23  nivose  an  IX,  the  Law  of  22  germinal  an  XI,  the  De- 
crees of  February  20,  and  September  5, 1810,  the  Royal  Order  of 
December  28,  1818,  the  Order  of  June  1,  1820,  as  well  as  the 
dispositions  of  Art.  50  of  the  Law  of  February  7.  1859,  and 
of  Arts.  184,  213  and  214  of  the  Penal  Code,  insofar  as  they 
apply  to  said  marks. 

Nothing  is  provided  anew  in  whatever  concerns  special 
marks  imposed  by  way  of  public  guarantee,  and  in  particular  as 
respects  the  execution  of  the  customs  and  firearms  laws. 

ART.  18.  Every  deposit  of  mark  effected  in  execution 
of  existing  laws  shall  cease  to  have  effect  on  January  1,  1881, 
unless  it  has  been  renewed  prior  to  this  date  in  accordance  with 
Art.  2. 

The  new  deposit  shall  be  exempt  from  the  stamp  and  regis- 
tration fee,  as  well  as  from  the  tax  imposed  by  Art.  5. 

ART.  19.  The  Government  may  conclude  international 
conventions  or  sign  articles  additional  to  the  existing  conven- 
tions assuring  to  foreigners  and  to  Belgians  that  exploit  their 
industry  or  their  commerce  outside  of  Belgium,  the  exclusive 
use  of  their  mark  in  Belgium,  on  fulfillment  of  the  formalities 
prescribed  by  the  present  law  and  subject  to  the  condition  of 
reciprocity  for  Belgian  marks. 


BELGIUM  77 

It  may  also,  subject  to  the  conditions  that  it  shall  determine, 
authorize  the  deposit  of  marks  and  the  payment  of  the  fee  in 
Belgian  Consulates  established  abroad. 

ART.  20.  A  Royal  Order  shall  determine  the  time  of 
the  coming  into  effect  of  the  present  law,  the  formalities  to  be 
fulfilled  for  the  deposit  and  the  publicity  of  marks,  as  well  as 
the  measures  necessary  for  the  execution  of  the  law. 

Let  the  present  law  be  published;  let  it  be  invested  with 
the  seal  of  the  State  and  published  in  the  Moniteur. 


BERMUDA 

THE  PATENTS,  DESIGNS*  AND  TBADE  MARKS  ACT 
[OF  NOVEMBER  18],  1902 

Interpretation 

1.  In  this  Act  unless  the  context  otherwise  requires  the 
following  words  and  expressions  shall  have  the  meanings  as- 
signed to  them  in  this  section: 

(6)  " Court"  means  the  Court  of  Chancery  of  these  Islands; 

(7)  "Judge"  means  the  Chief  Justice  of  these  Islands,  or 
in  his  absence  the  Acting  Chief  Justice,  (if  any),  or  in  the  event 
of  the  absence  of  both  of  them,  any  Assistant  Justice  of  the 
Court ; 

(8)  "Crown  Officer"  means  the  Attorney  General  of  these 
Islands  or  the  person  for  the  time  being  acting  as  Attorney 
General  under  lawful  appointment; 

(9)  "Registrar"  shall  include  any  Deputy  Registrar  or 
other  person  acting  as  Registrar  under  lawful  authority; 

(10)  "registered "means  registered  in   .    .    .   the  Register 
of  Trade  Marks  .  .  .  and  "registration"  has  a  corresponding 
meaning ; 

(11)  "prescribed"  means  prescribed  by  this  Act  or  by  any 
rules  made  under  the  provisions  of  this  Act,  or  any  other  Act 
applicable  to  the  case; 

(13)  "class"  means  prescribed  class. 

Appointment  of  Registrar 

2.  It  shall  be  lawful  for  the  Governor  to  appoint  a  Regis- 
trar of  Patents,  Designs  and  Trade  Marks,  in  this  Act  called  the 
Registrar,  and  to  prescribe  the  office  in  which  the  Registrar  for 
the  time  being  shall  carry  out  his  duties  under  this  Act,  and  such 
office  shall  be  called  the  Registry  of  Patents,  Designs  and  Trade 
Marks,  and  is  in  this  Act  called  the  Registry 

TRADE  MARKS 
Register  of  trade  marks 

26.  The  Registrar  shall  keep  at  the  registry  a  book  called 
the  Register  of  Trade  Marks,  and  shall  record  therein  the  names 
and  addresses  of  proprietors  of  registered  trade  marks,  notifi- 

*  Matter  relating  to  patents  and  designs  is  omitted. 


BERMUDA  79 

cations  of  assignments,  changes  and  transmissions  of  trade 
marks,  and  such  other  matters  as  may  be  from  time  to  time 
prescribed. 

Application  for  registration 

27.  (1)  The  Registrar  may,  on  application  by  or  on  behalf 
of  any  person  claiming  to  be  the  proprietor  of  a  trade  mark, 
and  on  payment  of  the  prescribed  fee,  register  the  trade  mark. 

(2)  The  application  must  be  made  in  the  Form  E  in  the 
first  Schedule  to  this  Act,  or  in  such  other  form  as  may  be  from 
time  to  time  prescribed,  and  must  be  left  at  the  Registry  in  the 
prescribed  manner. 

(3)  The  application  must  be  accompanied  by  the  prescribed 
number  of  representations  of  the  trade  mark  and  must  state 
the  particular  class  of  goods  or  classes  of  goods  in  connection 
with  which  the  applicant  desires  the  trade  mark  to  be  registered. 

(4)  The  Registrar  may  if  he  thinks  fit  refuse  to  register  a 
trade  mark,  subject  to  appeal  to  a  Judge  in  Chambers. 

Limit  of  time  for  proceeding  with  application 

28.  Where  the  registration  of  a  trade  mark  shall  not  be 
completed  within  twelve  months  from  the  date  of  the  applica- 
tion by  reason  of  default  on  the  part  of  the  applicant  the  appli- 
cation shall  be  deemed  to  be  abandoned. 

Conditions  of  registration  of  trade  mark 

29.  (1)  For  the  purposes  of  this  Act  a  trade  mark  must 
consist  of  or  contain  at  least  one  of  the  following  essential 
particulars : — 

(a)  a  name  of  an  individual  or  firm  printed,  impressed,  or 
woven  in  some  particular  and  distinctive  manner ;  or 

(b)  a  written  signature  or  copy  of  a  written  signature  of 
the  individual  or  firm  applying  for  registration  thereof  as  a 
trade  mark ;  or 

(c)  a  distinctive  device,  mark,  brand,  heading,  label  or 
ticket;  or 

(d)  an  invented  word  or  invented  words;  or 

(e)  a  word  or  words  having  no  reference  to  the  character 
or  quality  of  the  goods,  and  not  being  a  geographical  name. 

(2)  There  may  be  added  to  any  one  or  more  of  the  essential 
particulars  mentioned  in  this  section  any  letters,  words,  or 
figures,  or  combination  of  letters,  words,  or  figures,  or  of  any 
of  them,  but  the  applicant  for  registration  of  any  such  addi- 
tional matter  must  state  in  his  application  the  essential  par- 
ticulars of  the  trade  mark,  and  must  disclaim  in  his  application 
any  right  to  the  exclusive  use  of  the  added  matter,  and  a  copy 
of  the  statement  and  disclaimer  shall  be  entered  on  the  Register. 


80  BERMUDA 

(3)  Provided  always  as  follows — 

(a)  A  person  need  not  under  this  section  disclaim  his  own 
name  or  the  foreign  equivalent  thereof,  or  his  place  of  business, 
but  no  entry  of  any  such  name  shall  affect  the  right  of  any 
owner  of  the  same  name  to  use  that  name  or  the  foreign  equiva- 
lent thereof;  and 

(b)  any  special  and  distinctive  word  or  words,  letter,  figure, 
or  combination  of  letters  or  figures,  or  of  letters  and  figures, 
used  as  a  trade  mark,  either  in  this  Colony,  or  elsewhere,  before 
this  Act  comes  into  operation,  may  be  registered  as  a  trade 
mark. 

Connection  of  trade  mark  with  goods 

30.  A  trade  mark  must  be  registered  for  particular  goods 
or  classes  of  goods. 

Registration  of  a  series  of  trade  marks 

31.  When  a  person  claiming  to  be  the  proprietor  of  several 
trade  marks,  which,  while  resembling  each  other  in  the  material 
particulars  thereof,  yet  differ  in  respect  of  (a)  the  statement 
of  the  goods  for  which  they  are  respectively  used  or  proposed 
to  be  used,  or  (b)  statements  of  numbers,  or  (c)  statements  of 
price,  or  (d)  statements  of  quality  or  (e)  statements  of  names 
of  places,  seeks  to  register  such  trade  marks,  they  may  be  reg- 
istered as  a  series  in  one  registration.    A  series  of  trade  marks 
shall  be  assignable  and  transmissible  only  as  a  whole,  but  for 
all  other  purposes  each  of  the  trade  marks  composing  a  series 
shall  be  deemed  and  treated  as  registered  separately. 

Trade  marks  may  be  registered  in  any  colour 

32.  A  trade  mark  may  be  registered  in  any  colour,  and 
such  registration  shall,  subject  to  the  provisions  of  this  Act, 
confer  on  the  registered  owner  the  exclusive  right  to  use  the 
same  in  that  or  any  other  colour. 

Applications  for  registration  to  be  advertised 

33.  Every  application  for  registration  of  a  trade  mark 
under  this  Act  shall  as  soon  as  practicable  after  its  receipt  be 
advertised  by  the  Registrar  in  the  gazette,  unless  he  shall  refuse 
to  entertain  the  application. 

Opposition  to  registration 

34.  (1)  Any  person  may  within  three  months  after  the 
first  advertisement  of  the  application  for   registration  give 
notice  in  duplicate  to  the  Registrar  of  opposition  to  registration 
of  the  trade  mark,  and  the  Registrar  shall  send  one  copy  of 
such  notice  to  the  applicant. 

(2)  Within  one  month  after  the  receipt  of  such  notice,  or 
such  further  time  as  the  Registrar  shall  allow,  the  applicant 


BERMUDA  81 

may  send  to  the  Registrar  a  counter  statement  in  duplicate  of 
the  grounds  on  which  he  relies  for  his  application,  and  if  he 
does  not  do  so  shall  be  deemed  to  have  abandoned  his  appli- 
cation. 

Conflicting  claims  to  registration 

35.  On  the  receipt  of  such  counter  statement,  or  where 
each  of  two  or  more  persons  claims  to  be  registered  as  proprie- 
tor of  the  same  trade  mark,  the  Registrar  may  refuse  to  regis- 
ter any  of  them  until  their  rights  have  been  determined  by 
the  Court. 

Restrictions  on  registration 

36.  (1)  Except  where  the  Court  has  decided  that  two  or 
more  persons  are  entitled  to  be  registered  as  proprietors  of  the 
same  trade  mark,  the  Registrar  shall  not  register  in  respect 
of  the  same  goods  or  description  of  goods  a  trade  mark  identical 
with  one  already  on  the  Register  with  respect  to  such  goods  or 
description  of  goods. 

(2)  Except  as  aforesaid  the  Registrar  shall  not  register 
with  respect  to  the  same  goods  or  description  of  goods  a  trade 
mark  having  such  resemblance  to  a  trade  mark  already  on  the 
register  with  respect  to  such  goods  or  description  of  goods  as 
to  be  calculated  to  deceive. 

Words  likely  to  deceive  not  to  be  registered 

37.  It  shall  not  be  lawful  to  register  as  part  of  or  in  com- 
bination with  a  trade  mark  any  words  the  use  of  which  would, 
by  reason  of  their  being  calculated  to  deceive,  or  otherwise,  be 
deemed  disentitled  to  protection  in  England,  according  to  the 
law  and  practise  there  in  such  matters. 

Provisions  for  entry  on  register  of  distinctive  words  as 
additions  to  trade  mark 

38.  (1)  Nothing  in  this  Act  shall  be  construed  to  prevent 
the  Registrar  entering  on  the  Register  in  the  prescribed  man- 
ner, and  subject  to  the  prescribed  conditions,  as  an  addition  to 
any  trade  mark,  any  distinctive  word  or  combination  of  words, 
or  in  the  case  of  a  trade  mark  used  in  this  colony  or  elsewhere 
before  this  Act  comes  into  operation  any  distinctive  device, 
mark,  brand,  heading,  label,  ticket,  letter,  or  figure  or  combina- 
tion of  letters,  words,  or  figures,  though  the  same  is  common 
to  the  trade  in  the  goods  with  respect  to  which  the  application 
is  made. 

(2)  The  applicant  for  registration  of  any  such  addition 
must  state  in  his  application  the  essential  particulars  of  the 
trade  mark,  and  must  disclaim  in  his  application  any  right  to 
the  exclusive  use  of  the  added  matter,  and  a  copy  of  the  state- 


82  BERMUDA 

ment  and  disclaimer  shall  be  entered  on  the  Register :  provided 
that  a  person  need  not  under  this  section  disclaim  his  own  name, 
or  the  foreign  equivalent  thereof,  or  his  place  of  business,  but 
no  entry  of  any  such  name  shall  affect  the  right  of  any  owner 
of  the  same  name  to  use  that  name,  or  the  foreign  equivalent 
thereof. 

(3)  Any  device,  mark,  brand,  heading,  label,  ticket,  letter, 
word,  figure,  or  combination  of  letters,  words,  or  figures,  which 
was  or  were  used  publicly  by  more  than  three  persons  in  this 
Colony  or  elsewhere  before  this  Act  comes  into  operation,  on 
the  same  or  a  similar  description  of  goods  shall  for  the  purposes 
of  this  section  be  deemed  common  to  the  trade  in  such  goods. 

Application  for  registration  to  be  equivalent  to  public 
use  of  trade-mark 

39.  Application  for  registration  of  a  trade  mark  shall  be 
deemed  to  be  equivalent  to  the  public  use  of  the  trade  mark,  and 
the  date  of  the  application  shall  for  the  purposes  of  this  Act 
be  deemed  to  be  the  date  of  registration. 

Right  of  first  proprietor  to  exclusive  use  of  trade-mark 

40.  The  registration  of  a  person  as  proprietor  of  a  trade 
mark  shall  be  prima  facie  evidence  of  his  right  to  the  exclusive 
use  of  the  trade  mark,  and  shall  after  the  expiration  of  five 
years  from  the  date  of  the  registration  be  conclusive  evidence 
of  his  right  to  the  exclusive  use  of  the  trade  mark,  subject  to 
the  provisions  of  this  Act. 

Infringement  of  trade-mark  may  be  restrained  and 
damages  recovered 

41.  The  Court  may  restrain  any  person  from  infringing 
a  trade  mark  and  damages  for  such  infringement  may  be  recov- 
ered by  action  in  the  Court  of  General  Assize  if  such  trade 
mark  has  been  registered,  or  if  registration  thereof  in  the  Reg- 
ister of  Trade  Marks  has  been  refused,  but  in  no  other  case. 
The  Registrar  on  request,  and  on  payment  of  the  prescribed 
fee,  may  grant  a  certificate  that  such  registration  has  been 
refused. 

Plaintiff  to  have  full  costs  in  subsequent  action 

42.  In  an  action  for  infringement  of  a  registered  trade 
mark  the  Court  or  the  Judge  may  certify  that  the  right  to  the 
exclusive  use  of  the  trade  mark  came  in  question,  and,  if  the 
Court,  or  the  Judge,  so  certifies,  then  in  any  subsequent  action 
for  infringement  the  plaintiff  in  that  action,  on  obtaining  a  final 
order  or  judgment  in  his  favour,  shall  nave  his  full  costs, 
charges,  and  expenses  as  between  Solicitor  and  client,  unless  the 
Court  or  the  Judge  trying  the  subsequent  action  certifies  that 


BERMUDA  83 

he  ought  not  to  have  the  same. 

Assignment  and  transmission  of  trade-marks 

43.  A  trade  mark,  when  registered,  shall  be  assigned  and 
transmitted  only  in  connection  with  the  goodwill  of  the  business 
concerned  in  the  particular  goods  or  classes  of  goods  for  which 
it  has  been  registered,  and  shall  be  determinable  with  that 
goodwill. 

Alteration  of  registered  trade  mark 

44.  (1)  The  registered  proprietor  of  any  trade  mark  may 
apply  to  the  Court  for  leave  to  add  to  or  alter  such  mark  in  any 
particular,  not  being  an  essential  particular  within  the  meaning 
of  this  Act,  and  the  Court  may  refuse  or  grant  leave  on  such 
terms  as  it  may  think  fit. 

(2)  Notice  of  any  intended  application  to  the  Court  under 
this  section  shall  be  given  to  the  Registrar  by  the  applicant, 
and  the  Registrar  shall  be  entitled  to  be  heard  personally,  or 
by  solicitor  or  counsel,  on  the  application,  and  the  Court  may 
make  such  order  as  to  the  Registrar's  costs  as  it  may  think  fit. 

(3)  If  the  Court  grants  leave  the  Registrar  shall  on  proof 
thereof,  and  on  payment  of  the  prescribed  fee  cause  the  Regis- 
ter to  be  altered  in  conformity  with  the  order  of  leave. 

Removal  of  trade  mark  from  register  after  fourteen  years 
unless  fee  paid  for  renewal  of  registration 

45.  (1)  At  the  expiration  of  fourteen  years  from  the  date 
of  registration  the  trade  mark  shall  be  removed  from  the  Reg- 
ister unless  the  proprietor  shall,  before  the  expiration  of  such 
fourteen  years,  pay  to  the  Registrar  the  prescribed  fee,  and  so 
from  time  to  time  at  the  expiration  of  each  successive  period 
of  fourteen  years:  provided  that  three  months  at  least  before 
the  expiration  of  such  periods  respectively  the  Registrar  shall 
give  notice  of  such  approaching  expiration  to  the  proprietor  of 
such  trade  mark. 

(2)  Where  under  this  section  a  trade  mark  has  been  re- 
moved from  the  Register  for  non-payment  of  the  prescribed 
fee,  the  Registrar  may  if  satisfied  that  it  is  just  to  do  so,  restore 
such  trade  mark  to  the  Register  on  payment  of  the  prescribed 
additional  fee. 

(3)  Where  a  trade  mark  has  been  removed  from  the  Regis- 
ter for  non-payment  of  the  prescribed  fee,  or  otherwise,  such 
trade  mark  shall  nevertheless  for  the  purpose  of  any  application 
for  registration  during  one  year  next  after  the  date  of  such 
removal,  be  deemed  to  be  a  trade  mark  which  is  already  regis- 
tered, unless  it  is  shewn  to  the  satisfaction  of  the  Registrar 
that  the  non-payment  of  the  fee  arises  from  the  death  or  bank- 


84  BERMUDA 

ruptcy  of  the  registered  proprietor,  or  from  his  having  ceased 
to  carry  on  business,  and  that  no  person  claiming  under  such 
proprietor  or  under  his  bankruptcy  is  using  the  trade  mark. 

GENERAL  PROVISIONS 
Trusts  not  to  be  entered  in  Register 

46.  There  shall  not  be  entered  in  any  register  kept  under 
this  Act,  or  be  receivable  by  the  Registrar,  notice  of  any  trust 
expressed,  implied  or  constructive. 

Registrar  may  refuse  trade  mark  in  certain  cases 

47.  The  Registrar  may  refuse    ...    to  register  a    ... 
trade  mark  which  is,  or  of  which  the  use  would  be,  scandalous 
or  contrary  to  law  or  morality. 

Registration  complete  when  name  of  proprietor  is  entered  in 

Register 

48.  Any    .    .    .    trade  mark  shall  be  deemed  to  be  regis- 
tered when  the  name  of  any  person  is  entered  as  the  proprietor 
thereof  in  ...  the  Register  of  Trade  Marks  .  .  . 

Entry  of  assignments  and  transmissions  in  Registers 

49.  Where  a  person  becomes  entitled  by  assignment,  trans- 
mission, or  other  operation  of  law,  to    ...    a  registered  trade 
mark,  the  Registrar  shall,  on  request  and  on  proof  of  title, 
cause  the  name  of  such  person  to  be  entered  as  the  proprietor 
of  the    .    .    .    trade  mark,  in  the  Register  of    ...    Trade 
Marks    .    .    .    The  person  for  the  time  being  entered  in  the 
Register  of    ...    Trade  Marks,  as  the  proprietor  of  a    ... 
trade  mark,    .    .    .    shall,  subject  to  the  provisions  of  this  Act 
and  to  any  rights  appearing  from  such  Register  to  be  vested 
in  any  other  person,  have  power  absolutely  to  assign,  grant 
licenses  as  to,  or  otherwise  deal  with  the  same,  and  to  give 
effectual  receipts  for  any  consideration  for  such  assignment, 
license  or  dealing ;  provided  that  any  equities  in  respect  of  such 
.    .    .    trade  mark,  may  be  enforced  in  like  manner  as  in  respect 
of  any  other  personal  property ;  provided  also  that  the  priority 
of  all  assignments  and  charges  shall,  as  regards  purchasers  for 
value  without  notice,  be  determined  by  priority  of  registration. 

Inspection  of  and  extracts  from  the  Registers 

50.  Every  Register  kept  under  this  Act  shall  be  prima 
facie  evidence  of  all  matters  duly  entered  therein,  and  every 
such  Register    .     .     .     shall  be  open  to  the  inspection  of  the 
public  on  payment  of  the  prescribed  fee,  subject  to  the  pro- 
visions of  this  Act,  and  to  such  Regulations  as  may  be  pre- 
scribed ;  and  certified  copies  sealed  with  the  seal  of  the  Registry 
of  any  entry  in  such  Register    .    .    .    shall  be  given  to  any 
person  requiring  the  same  on  payment  of  the  prescribed  fee; 


BERMUDA  85 

provided  that  whenever  any  .  .  .  extract  includes  any  trac- 
ing, drawing,  or  diagram,  an  additional  fee  for  any  copy  thereof 
shall  be  paid  equal  to  the  cost  of  preparing  such  tracing,  draw- 
ing or  diagram. 

Registrar  may  correct  clerical  errors  in  certain  cases 

51.  The  Registrar  may,  on  request  in  writing,  accompanied 
by  the  prescribed  fee — 

(1)  Correct  any  clerical  error  in  or  in  connection  with  an 
application  for    .    .    .    registration  of  a    ...    trade  mark ;  or 

(2)  Correct  any  clerical  error  in  the  name,  style  or  address 
of  the  registered  proprietor  of  a    ...    trade  mark ;  or 

(3)  Cancel  the  entry  or  part  of  the  entry  of  a  trade  mark 
on  the  Register;  provided  that  the  applicant  accompanies  his 
request  by  a  statutory  declaration  made  by  himself  stating  his 
name,  address  and  calling,  and  that  he  is  the  person  whose  name 
appears  on  the  Register  as  the  proprietor  of  such  trade  mark ;  or 

(4)  Permit  an  applicant  for  registration  of  a    ...    trade 
mark  to  amend  his  application  by  omitting  any  particular  goods 
or  classes  of  goods  in  connection  with  which  he  has  desired  the 
.    .    .    trade  mark  to  be  registered. 

Certificate  of  Registrar  to  be  prima  facie  evidence 

52.  A  certificate  purporting  to  be  under  the  hand  of  the 
Registrar  as  to  any  entry,  matter,  or  thing  which  he  is  author- 
ized by  this  Act,  or  any  general  rules  made  under  this  Act  to 
make  or  do,  shall  be  prima  facie  evidence  of  the  entry  having 
been  made  and  of  the  contents  thereof,  and  of  the  matter  or 
thing  having  been  done  or  left  undone. 

Orders  affecting  Registrar  may  be  made  by  a  Judge 

53.  An  order  requiring  the  Registrar  to  do,  or  abstain 
from  doing,  anything  under  this  Act,  may  be  made  by  a  Judge 
on  a  summons  in  Chambers. 

Court  or  Judge  may  make  orders,  impose  terms,  etc. 

54.  In  any  proceedings  under  this  Act  the  Court  or  a 
Judge,  as  the  case  may  be,  may  at  any  time  make  such  orders 
for  an  injunction,  inspection,  or  account,  impose  such  terms, 
and  give  such  directions  as  to  the  order  in  which  the  parties 
shall  be  heard,  and  the  procedure  under  this  Act  generally  as 
the  Court  or  Judge  shall  see  fit. 

Declaration  by  infant,  lunatic,  etc. 

55.  If  any  person  is  by  reason  of  infancy,  lunacy  or  other 
disability,  incapable  of  making  any  declaration  or  doing  any- 
thing required  or  permitted  by  this  Act,  or  by  any  rules  made 
under  the  authority  of  this  Act,  then  the  guardian  or  committee 
(if  any)  of  such  incapable  person,  or,  if  there  be  none,  any 


86  BERMUDA 

person  appointed  by  any  Court  or  Judge  possessing  jurisdiction 
in  respect  of  the  property  of  persons  under  disability,  upon  the 
petition  of  any  person  on  behalf  of  such  incapable  person,  or 
of  any  other  person  interested  in  making  such  declaration  or 
doing  such  thing,  may  make  such  declaration,  or  a  declaration 
as  nearly  as  practicable  corresponding  thereto  as  circumstances 
permit,  and  do  such  thing  in  the  name  and  on  behalf  of  such 
incapable  person,  and  all  acts  done  by  such  substitute  shall  for 
the  purposes  of  this  Act  be  as  effectual  as  if  done  by  the  person 
for  whom  he  is  substituted. 

Quarterly  publication  of  trade  marks  registered 

56.  The  Registrar  shall  within  fifteen  days  after  the  ter- 
mination of  each  quarter  cause  to  be  published  in  the  Gazette 
a  list  of  all    ...    trade  marks  registered  during  such  quarter, 
and  any  further  information  that  he  may  deem  generally  useful 
or  important ;  and  the  cost  of  such  publication  shall  be  defrayed 
out  of  the  public  treasury. 

Transmission  of  copies  of  registered  trade  marks  to  England 

57.  Copies  of     ...     all  published  lists  of  registered 
.    .    .    trade  marks  shall  be  transmitted  to  the  Controller  of 
Patents,  Designs  and  Trade  Marks  in  England. 

Register  empowered  to  make  rules  regulating  the  practice 
under  this  Act,  etc. 

58.  The  Registrar,  with  the  sanction  of  the  Governor  in 
Council,  may  from  time  to  time  make  such  general  rules  and 
do  such  things  as  he  may  think  expedient,  for  regulating  the 
practice  of  registration  under  this  Act,  for  classifying  goods 
for  the  purposes  of    ...    trade  marks,  or  for  any  other 
purpose  which  may  be  deemed  necessary  for  carrying  out  the 
provisions  of  this  Act;  and  shall  also  have  power,  with  the  like 
sanction,  to  alter,  add  to,  amend  or  revoke  any  such  rules. 

Rules  to  be  published 

59.  All  rules  made  in  pursuance  of  this  Act  shall  be  pub- 
lished in  the  Gazette. 

Fees  of  Registrar 

60.  The  Registrar  shall  be  entitled  to  receive  for  his  own 
use  the  fees  specified  in  the  second  schedule  to  this  Act  for  the 
services  therein  mentioned,  and  for  any  other  services  per- 
formed by  him  under  the  provisions  of  this  Act  such  reasonable 
fees  as  shall  be  sanctioned  by  the  Governor  in  Council  for  such 
other  services  respectively. 

Appeal  to  Governor-in-Council  as  to  fees 

61.  If  any  person  shall  be  dissatisfied  as  to  any  fee  de- 
manded from  him  by,  or  paid  by  him  to,  the  Registrar,  he  may 


BERMUDA  87 

appeal  to  the  Governor  in  Council,  whose  decision  thereon  shall 
be  final. 

Declaration 

62.  Any  declaration  required  to  be  made  under  this  Act 
may  be  taken  before  the  Registrar. 

63.  All  books,  stationery  and  other  requisites  which  shall 
be  required  for  the  use  of  the  Registrar  for  the  purposes  of  this 
Act  shall  be  supplied  to  him  at  the  public  expense,  and  the  cost 
of  printing  the  prescribed  forms,  and  any  other  necessary  docu- 
ments used  in,  or  issued  from,  the  Registry  for  the  purposes  of 
this  Act,  shall  be  defrayed  out  of  the  public  treasury. 

Suspending  clause 

64.  This  Act  shall  not  come  into  operation  unless  or  until 
the  Governor  shall  notify  by  proclamation  that  it  is  His  Majes- 
ty's pleasure  not  to  disallow  the  same,  and  subject  as  aforesaid, 
it  shall  come  into  operation  on  the  date  of  such  proclamation 
or  on  such  later  date  as  shall  be  thereby  fixed  for  the  purpose. 


BOLIVIA 

LAW  OF  JANUARY  15, 1918 
CHAP.  I 

Marks 

ARTICLE  1.  There  is  understood  by  mark  every  characteris- 
tic and  peculiar  sign,  emblem  or  denomination  with  which  it  be 
desired  to  distinguish  the  productions  of  a  factory,  the  objects 
of  commerce,  the  products  of  the  land  and  of  the  agricultural, 
forest,  live-stock,  and  extractive  [mining]  industries. 

There  may  be  used  as  marks:  names  and  denominations 
under  a  distinctive  form,  fancy  words  or  titles,  numbers  and 
letters  of  special  design  or  forming  combinations,  labels,  posters, 
emblems,  monograms,  covers,  borders,  stamps,  seals,  engrav- 
ings, arms,  figures,  stamped  devices,  reliefs,  filigrees,  vignettes, 
containers,  receptacles,  or  any  other  analogous  typical  sign. 

ART.  2.  There  may  not  be  used  as  marks:  (1)  letters, 
words,  names  or  distinctive  emblems  of  the  State;  (2)  national 
and  foreign  arms,  escutcheons,  or  standards,  without  special 
authorization;  (3)  terms  and  locutions  that  have  passed  into 
current  and  general  use,  distinguishing  a  product,  with  relation 
to  the  same  product;  (4)  designs  or  expressions  immoral  or 
offensive  as  regards  persons  and  institutions;  (5)  portraits  and 
proper  names  of  persons  without  their  permission  or  that  of 
their  heirs  inclusive  of  the  fourth  degree;  (6)  the  usual 
form  or  color  of  the  products;  (7)  signs,  denominations,  de- 
signs, or  others,  specified  in  Art.  1,  that  do  not  present  the 
character  of  novelty  with  relation  to  the  product  to  be  dis- 
tinguished; (8)  marks  that  through  general  use  may  have  be- 
come of  public  domain. 

ART.  3.  Likewise,  there  may  not  be  used  as  marks  those 
that  resemble  marks  previously  registered,  occasioning  confu- 
sion. Simple  variations  of  letters  or  details,  preserving  the 
likeness  of  the  whole,  are  included  within  this  prohibition. 

CHAP.  II 

OWNERS  OF  MARKS;  REGISTRATION  AND  EXPIRATION 
ART.  4.    Any  individual   or   corporation   that   may   have 
adopted  a  mark  shall  have  the  right  to  its  exclusive  use  on  regis- 
tration of  the  same  in  the  form  established  by  the  present  law. 
ART.  5.    Only  the  proprietors  of  registered  marks  or  their 
attorneys  may  oppose  or  demand  the  avoidance  of  another  regis- 


BOLIVIA  89 

tration,  prosecute  infringements,  etc.,  without  prejudice  of  that 
especially  provided  for  in  Arts.  20  and  21. 

ART.  6.  Syndicates  or  corporate  associations,  local  or  na- 
tional, etc.,  may  likewise  use  and  register  special  marks  for  the 
benefit  of  their  adherents,  it  being  always  necessary  to  add  the 
individual  mark  of  the  same. 

ART.  7.  The  registration  of  the  mark  for  chemical  and 
pharmaceutical  products  shall  be  obligatory.  On  it  or  on  its 
conjointly  affixed  label  the  formula  of  the  component  ingredient 
shall  be  set  forth  when  it  is  a  matter  of  medicinal  specifics. 

ART.  8.  The  exclusive  ownership  of  a  mark  as  such  shall 
be  acquired  with  relation  to  the  articles  for  which  it  was  applied, 
according  to  the  proviso  of  Art.  57. 

ART.  9.  The  registration  of  a  mark  bestows  upon  it  the 
legal  protection  and  other  rights  established  in  the  present  law 
for  the  term  of  ten  years,  counted  from  the  date  of  the  grant. 

ART.  10.  In  case  of  conflict  of  rights  between  two  or  more 
proprietors  of  registered  marks,  he  that  shall  apply  for  his 
registration  first  shall  have  precedence. 

ART.  11.  The  right  of  ownership  to  a  mark  shall  be  ex- 
tinguished: (1)  on  petition  of  the  party  interested;  (2)  when 
the  legal  term  has  expired  without  the  renewal  having  been 
effected;  (3)  when  the  nullity  of  a  mark  is  declared  by  the  com- 
petent authority;  (4)  when  the  mark  contains  false  designations 
with  relation  to  the  nature  of  the  article,  the  place  or  country 
wherein  it  has  been  manufactured  or  distributed,  and  to  medals, 
diplomas,  awards,  or  distinctions  of  honor  granted  in  exposi- 
tions or  competitions. 

CHAP.  Ill 

FORMALITIES  FOR  THE  REGISTRATION  OP  MARKS 
ART.  12.    Any  person  that  desires  to  obtain  the  registra- 
tion of  a  mark  shall  apply  to  the  Chief  of  the  Office  of  Industrial 
Property,  presenting: 

(1)  An  application  on  stamped  paper,  himself  or  through 
a  legal  representative  with  ample  power,  stating  the  location 
of  the  factory,  industry  or  business  whose  mark  it  is  desired 
to  register; 

(2)  Six  copies  of  the  original  label  or  etiquette  that  the 
party  interested  uses  as  a  mark,  or  six  facsimiles  of  the  same; 

(3)  An  electrotype  whose  size  shall  not  be  greater  than  ten 
centimetres  in  length  by  eight  in  breadth  and  twenty-four  milli- 
metres in  thickness ; 

(4)  A  description  in  duplicate  of  the  mark  in  the  Spanish 
language,  in  which  shall  be  indicated  the  products  or  merchan- 


90  BOLIVIA 

dise  to  which  it  is  affixed  and  the  number  of  the  class,  in  ac- 
cordance with  the  nomenclature  found  in  Art.  37 ; 

(5)  Corresponding  authorization,  in  the  cases  of  Art.  2, 
paragraph  5; 

(6)  It  being  a  matter  of  collective  marks,  there  shall  be 
included  a  certificate  that  proves  the  legal  existence  of  the  asso- 
ciation or  syndicate. 

ABT.  13.  The  application  having  been  filed  in  the  form  and 
under  the  conditions  expressed  in  the  preceding  article,  the 
Chief  of  the  Office  of  Industrial  Property  shall  enter  at  the  foot 
a  short  statement,  noting  the  day  and  the  hour  on  which  it  was 
presented.  A  receipt  or  certificate  of  filing  will  be  granted  on 
verbal  request  of  the  party  interested. 

ABT.  14.  In  the  Revista  de  Propiedad  Industrial,  which 
will  be  issued  under  the  charge  of  that  Office,  or,  in  default  of 
such,  in  the  Boletin  Departamental,  the  application  for  registra- 
tion shall  be  published  three  times  ten  days  apart,  with  notice  of 
presentation;  the  electrotype  of  the  mark,  and  the  number  of 
the  Class  to  which  the  merchandise  protected  thereby  belongs. 

ABT.  15.  Fifty  days  having  passed  since  the  first  publica- 
tion without  opposition  having  been  brought,  and  the  requisites 
indicated  by  the  present  law  having  been  fulfilled,  the  Chief  of 
the  Office  of  Industrial  Property  shall  issue  a  resolution  accept- 
ing or  denying  the  registration;  in  the  first  case,  he  will  issue 
the  certificate  of  registration  of  the  mark. 

ABT.  16.  The  certificate  shall  consist  of  a  short  extract 
that  will  contain  the  name,  profession,  and  domicile  of  the  ap- 
plicant; the  designation  of  the  mark  and  the  Class  to  which  it 
belongs ;  date  of  the  presentation  and  of  the  decree  that  grants 
registration.  There  shall  be  added  the  duplicate  of  the  descrip- 
tion of  the  mark  mentioned  in  paragraph  4  of  Art.  12. 

ABT.  17.  Resolutions  of  the  Chief  of  the  Office  of  Indus- 
trial Property  shall  be  appealable  to  the  Minister  of  Industry. 

CHAP.  IV 

RENEWAL  OF  REGISTBATION 

ABT.  18.  The  owner  of  a  mark  may  every  ten  years  renew 
the  registration  of  the  same,  in  order  to  continue  enjoying  the 
corresponding  legal  rights.  In  order  to  obtain  this  renewal 
the  documents  previously  presented  may  be  utilized,  and  the 
new  registration  will  be  granted  without  necessity  of  the  pub- 
lications or  other  requisites  prescribed  for  the  first,  and  solely 
with  the  obligation  of  paying  new  fees,  in  conformity  with 
Art.  30. 

ABT.  19.    The  renewal  of  a  mark  shall  be  applied  for  within 


BOLIVIA  91 

the  three  months  prior  to  expiry  of  the  first  registration.  The 
ten  years  specified  in  Art.  9  and  in  the  preceding  article  having 
expired  without  the  renewal  having  been  applied  for,  the  regis- 
tration shall  become  legally  extinct. 

CHAP.  V 

OPPOSITIONS,  AVOIDANCES,  AND  JURISDICTION 

ART.  20.  The  Public  Ministry,  or  any  person  that  has  or 
has  not  a  registered  mark,  may  bring  opposition  against  the 
registration  of  a  mark  that  might  be  included  within  the  pro- 
hibitions of  Art.  2,  as  well  as  oppose  the  avoidance  of  said  regis- 
tration. Those  interested  that  have  a  prior  registered  mark 
may  also  oppose  applications  for  registration  or  solicit  the  nul- 
lification of  those  already  granted,  in  the  cases  of  Art.  3. 

In  either  case  these  actions  shall  be  tried  in  accordance  with 
the  terms  established  by  this  law. 

ART.  21.  The  owner  of  a  registered  mark  may  oppose  the 
grant  of  a  new  registration  that  injures  his  rights,  within  the 
term  of  fifty  days  from  the  first  publication,  or  lodge  applica- 
tion for  its  avoidance  within  six  months  from  the  date  of  con- 
cession. 

ART.  22.  Avoidance  that  shall  be  applied  for  subsequent 
to  the  term  fixed  in  the  preceding  article  shall  have  to  be  brought 
before  the  District  Judge  within  the  year  following. 

ART.  23.  The  right  of  ownership  of  a  mark  shall  become 
final  in  eighteen  months,  action  for  nullification  being  outlawed 
at  this  same  time. 

ART.  24.  If  it  be  a  matter  of  prior  use  of  a  mark,  absolute 
proof  only  will  be  accepted. 

ART.  25.  The  Chief  of  the  Office  of  Industrial  Property 
will  decide  in  first  instance  as  regards  oppositions  and  appeals 
for  avoidance,  with  appeal  to  the  Minister  of  Industry. 

CHAP.  VI. 

Assignments 

ART.  26.  The  ownership  of  the  mark  passes  to  the  heirs 
and  may  be  transferred  by  contract  or  by  provision  of  last  will. 

ART.  27.  The  assignment  or  sale  of  the  establishment 
covers  that  of  the  marks,  save  stipulation  to  the  contrary,  and 
the  assignee  has  the  right  of  availing  himself  of  them,  even 
though  they  be  of  a  name,  in  the  same  manner  as  the  assignor 
used  them,  without  restrictions  other  than  those  expressly  in- 
dicated in  the  bill  of  sale  or  assignment. 

ART.  28.    Assignments  shall  be  recorded  in  the  Office  of 


92  BOLIVIA 

Industrial  Property,  to  the  end  that  they  shall  be  of  effect 
against  third  parties. 

ART.  29.  There  shall  be  issued  a  certificate  of  the  mark  in 
favor  of  the  assignee  on  corresponding  stamped  paper  form. 

These  certificates  shall  be  of  special  series  and  numeration, 
different  from  registered  marks,  and  reference  shall  be  made 
to  the  number  and  series  of  the  original  mark. 

CHAP.  VII 

FEES;  STAMPED  PAPER 

ART.  30.  For  a  mark  registered  with  relation  to  a  single 
class  of  goods,  there  shall  be  paid  into  the  National  Treasury 
a  fixed  fee  of  thirty  Bolivianos.  The  annual  tax  of  five  Boli- 
vianos, established  by  the  Law  of  November  25,  1893,  is  abro- 
gated. 

ART.  31.  For  each  additional  class  of  goods  that  the  mark 
protects,  there  shall  be  paid  an  additional  fee  of  five  Bolivianos. 

ART.  32.  For  collective  marks  there  shall  be  paid  the  sole 
fee  of  sixty  Bolivianos,  even  if  they  comprehend  several  or  all 
the  classes  of  Art.  37. 

ART.  33.  Certificates  of  registration  and  of  renewal  shall 
be  drawn  up  on  special  forms  of  paper  stamped  with  five  Boli- 
vianos. 

ART.  34.  Certificates  of  assignment  shall  be  drawn  up  on 
forms  of  the  value  of  ten  Bolivianos. 

ART.  35.  Legalized  copies  of  the  preceding  certificates 
shall  be  issued  on  ordinary  stamped  paper  of  the  value  of  one 
Boliviano. 

ART.  36.  For  each  publication  of  the  cliche  of  a  mark  or 
corresponding  information,  in  accordance  with  Art.  14,  there 
shall  be  paid  two  Bolivianos. 

For  that  of  a  commercial  or  industrial  name,  insignia,  etc., 
there  shall  be  paid  one  Boliviano  for  each  time. 

ART.  37.  For  the  effects  of  Arts.  8  and  12,  each  mark  may 
be  affixed  only  to  the  products  included  in  any  of  the  following 
categories : 

1.  Live  animals,  of  the  breed  of  horses,  cattle,  sheep,  goats, 
swine,  birds ;  other  live  animals. 

2.  Food  substances,  fresh  or  prepared  meat,  edible  fats, 
oleomargarine,  butter,  natural  or  preserved  milk,  cheese  of 
every  class,  caviar,  fish,  shell-fish,  molluscs,  honey,  natural  and 
artificial,  wheat,  rye,  barley,  oats,  corn,  flour  of  cereals,  rice  in 
the  grain,  malt,  alimentary  compositions,  vegetables,  potatoes, 
tubers  and  their  flour,  fruits,  coffee,  cocoa  and  chocolate,  tea, 


BOLIVIA  93 

sugar,  spices,  table  oil,  salt,  other  food  articles  of  animal  or 
vegetable  origin. 

3.  Wines,  beer,  alcohol,  spirits,  mineral  waters. 

4.  Raw  and  partly  prepared  materials,  hides,  marble,  tor- 
toise-shell, mother-of-pearl,  natural  fertilizers,  hay  and  forage, 
coca,  quinine,  grains  and  seeds,  India  rubber,  caucho,  tobacco- 
leaf,  construction  and  cabinet  woods,  charcoal,  copper  and  its 
barilla,  tin  and  barilla,  tungsten  (wolfram)  and  its  barilla,  lead, 
iron,  zinc,  aluminum,  silver,  gold,  marble  and  alabaster,  other 
stones,  mineral  oils,  lime,  cement,  sulphur,  wool,  silk,  cotton, 
jute,  hemp,  flax,  ramie. 

5.  Starches,  soaps,  candles  and  tapers,  perfumery  and  cos- 
metics, dyes,  stains  and  varnishes,  chemical  products. 

6.  Medicinal  compositions. 

7.  Cigars  and  cigarettes  and  other  tobaccos. 

8.  Manufactured  furs,  footwear,  gloves,  articles  of  travel. 

9.  Wool,  silk,  cotton,  etc.,  thread  of  every  kind,  embroid- 
eries, fancy-work,  buttons. 

10.  Hats  of  every  kind,  linens,  manufactured  garments  and 
trimmings. 

11.  Furniture  in  general. 

12.  Papers  and  cartons,  printed  books,  printed  music,  other 
articles  of  the  graphic  arts. 

13.  Manufactures  of  marble,  gypsum,  cement  and  stone, 
tiles,  brick,  mosaics,  tubing,  porcelain  and  delft,  other  pottery, 
glassware,  crystal  ware. 

14.  Articles  of  manufactured  iron,  articles  of  aluminum, 
copper,  bronze,  nickel,  lead  and  zinc. 

15.  Jewelry,  silverware,  and  like  articles  of  precious  metal, 
imitation  jewelry. 

16.  Locomotives,  electric  motors  and  apparatus,  steam  en- 
gines, machines  for  weaving,  pressing,  printing,  carding,  iron- 
ing, embroidering,  spinning,  and  other  machines  applicable  to 
industry,  machines  for  mining,  typewriting  machines,  sewing 
machines,  machines  for  the  manufacture  of  sugar,  spirits  and 
beer,  agricultural  implements,  tools  for  artisans,  office  equip- 
ment. 

17.  Coaches,  automobiles,  velocipedes,  motorcycles,  launches 
and  other  boats  and  their  accessories. 

18.  Musical  instruments,  scientific  apparatus,  chronological 
apparatus  and  accessories. 

19.  Arms  and  munitions,  rifles,  guns,  side-arms,  powder 
and  explosives. 

20.  Games  and  toys,  objects  of  art. 


94  BOLIVIA 

CHAP.  VIII 

INDUSTRIAL  AND  COMMERCIAL  NAMES  AND  TITLES  ;  LABELS, 
INSIGNIA,  ETC. 

ART.  38.  The  name  of  the  merchant  or  producer,  that  of 
the  firm,  that  of  joint  stock  companies,  that  of  the  sign,  designa- 
tion, or  insignia  of  a  house  or  establishment  that  trades  in  de- 
termined articles  or  products  shall  constitute  a  property  for  the 
effects  of  this  law. 

ART.  39.  Whoever  shall  desire  to  carry  on  an  industry, 
trade,  or  line  of  business  already  exploited  by  another  person 
with  the  same  name  or  with  the  same  conventional  designation 
shall  adopt  a  modification  that  will  make  that  name  or  that 
designation  visibly  distinct  from  that  which  the  pre-existing 
house  or  establishment  uses. 

ART.  40.  If  the  party  injured  by  the  use  of  a  name  does 
not  bring  action  within  the  term  of  one  year  from  the  day  its 
use  is  publicly  begun  by  another,  he  shall  lose  his  action  to  all 
claim. 

ART.  41.  Joint  stock  companies  shall  have  the  right  to  the 
name  that  they  bear,  the  same  as  any  individual,  and  they  are 
subject  to  the  same  limitations. 

ART.  42.  The  right  to  the  exclusive  use  of  the  name  as 
property  shall  be  extinguished  along  with  the  commercial  house 
that  bears  it,  or  with  the  exploitation  of  the  branch  of  business 
for  which  it  has  been  intended. 

ART.  43.  The  registration  of  the  name  is  not  necessary  for 
the  purpose  of  exercising  the  rights  granted  by  this  law. 

Nevertheless,  for  the  ends  of  Arts.  44,  45,  and  46,  it  may  be 
recorded  in  a  special  Register  that  shall  be  opened  for  the  pur- 
pose, by  serial  number,  there  being  indicated  the  name,  denom- 
ination or  sign,  its  application,  the  domicile  of  the  owner  and 
the  location  of  the  establishment,  the  day  and  hour  of  presen- 
tation. 

These  same  data  shall  be  published  three  consecutive  times 
in  the  Revista  de  Propiedad  Industrial  or  the  Boletin  Departa- 
mental. 

ART.  44.  The  owner  of  the  name,  corporate  name,  sign  or 
denomination  of  the  house,  enterprise,  or  establishment  may 
take  civil  action  to  prevent  the  usurpation  or  imitation  and  de- 
mand indemnities  and  damages  that  shall  be  caused  him  thereby. 

ART.  45.  He  may  likewise  take  criminal  action  against  the 
infringer  in  case  of  fraud.  This  will  be  presumed  when  the 
name  or  denomination  shall  have  been  registered  and  published 
in  the  form  of  Art.  43,  without  prejudice  to  proof  to  the  contrary. 


BOLIVIA  95 

ART.  46.  Infringers  in  such  case  shall  suffer  the  penalty 
of  from  one  to  three  months  of  imprisonment  and  a  fine  of  from 
50  to  200  Bolivianos. 

CHAP.  IX 

FALSIFICATIONS  AND  IMITATIONS  AND  THBIB  PENALTY 
ART.  47.    They  shall  be  punished  with  the  fine  of  from  100 
to  500  Bolivianos  and  the  penalty  of  from  three  months  to  one 
year  of  imprisonment: 

(1)  Who  falsify  a  mark ; 

(2)  Who  use  false  marks ; 

(3)  Who  fraudulently  imitate  a  mark; 

(4)  Who  affix  to  their  products  or  merchandise  the  mark 
of  another  and  knowingly  distribute  them. 

ART.  48.  They  shall  be  punished  with  a  fine  of  from  50 
to  200  Bolivianos  and  with  from  one  to  three  months  of  im- 
prisonment : 

(1)  Who  sell,  offer  for  sale,  or  offer  to  sell  false  or  fraudu- 
lently imitated  marks,  and  those  that  sell  authentic  marks  with- 
out the  consent  of  their  owner; 

(2)  Who  sell  or  offer  to  sell  or  distribute  spurious  goods 
with  false  mark  or  mark  fraudulently  imitated  with  respect  to 
genuine  marks; 

(3)  Who  place  or  have  placed  on  the  mark  of  merchandise 
or  a  product  a  false  statement  or  any  designation  with  relation 
either  to  the  nature,  quality,  quantity,  or  to  the  place  or  country 
in  which  it  has  been  made  or  sold,  or  medals,  diplomas,  men- 
tions, awards,  or  distinctions  of  honor  awarded  in  expositions 
or  competitions,  without  prejudice  to  their  right  being  annulled 
in  conformity  with  paragraph  4  of  Art.  11 ; 

(4)  Who  sell,  place  on  sale,  or  offer  to  sell  products  or 
merchandise  with  any  of  the  false  statements  mentioned  in  the 
preceding  paragraph. 

ART.  49.  In  cases  of  repetition,  the  penalties  imposed  by 
Arts.  47  and  48  shall  be  doubled. 

ART.  50.  Merchandise  or  products  with  false,  imitation, 
or  illegally  used  marks  that  are  found  in  the  possession  of  the 
culprit,  his  accomplices  or  agents,  shall  be  confiscated  and  sold 
after  destruction  of  said  marks.  Its  returns,  after  payment  of 
the  costs  and  damages  in  favor  of  the  civil  party  shall  be  applied 
to  the  funds  for  instruction  of  the  respective  municipalities; 
the  same  as  the  fines  fixed  by  this  law. 

Likewise,  the  instruments  intended  for  the  execution  of 
these  offenses  shall  be  destroyed. 

ART.  51.    Also,  marks  with  fraudulent  references,  referred 


96  BOLIVIA 

to  in  paragraph  5  of  Art.  48,  shall  be  destroyed. 

ART.  52.  Civil  or  criminal  action  may  not  be  brought  after 
the  expiry  of  three  years  from  the  commission  or  repetition  of 
the  offense,  or  from  the  day  on  which  the  owner  of  the  mark 
had  knowledge  of  the  fact  for  the  first  time. 

The  acts  that  interrupt  the  prescription  (as  to  outlawing 
of  actions)  are  the  same  as  those  that  the  Common  Law  deter- 
mines. 

ART.  53.  Criminal  action  for  the  offenses  comprised  in 
Arts.  45,  47,  and  48  shall  be  lodged  before  the  ordinary  Courts. 

ART.  54.  To  constitute  an  offense,  it  is  unnecessary  that 
the  falsification  or  imitation  embrace  all  of  the  articles  that 
were  to  be  marked — the  application  to  a  single  object  sufficing. 

ART.  55.  Mere  attempt  shall  not  be  punished;  but  it  will 
occasion  the  destruction  of  the  instruments  intended  exclusively 
for  the  falsification  and  other  offenses,  and  the  payment  of  the 
costs  and  expenses  occasioned  to  the  owner  of  the  mark. 

ART.  56.  Those  that  have  sold  or  have  for  sale  merchan- 
dise or  products  with  usurped  or  falsified  marks  shall  be  exempt 
from  the  penalty  (but  not  from  the  confiscation),  if  in  the  act 
of  being  summoned  they  shall  give  complete  and  authenticated 
statement  in  writing  to  the  owner  of  the  legitimate  mark,  the 
agent,  representative,  or  to  the  Judge,  concerning  the  name  and 
address  of  the  established  manufacturer  or  merchant  that  has 
sold  or  procured  for  him  the  merchandise,  as  well  as  the  time 
at  which  he  commenced  its  sale,  save  the  case  of  it  being  proven 
that  he  sold,  having  knowledge  of  the  falsification  or  usurpation. 

CHAP.  X 

PROCEDURE  FOR  THE  REPRESSION  OF  FALSIFICATIONS, 
IMITATIONS,  ETC. 

ART.  57.  Every  industrial  or  merchant  that  has  knowledge 
that  there  are  in  the  custom  House,  Post-Office,  or  an  individual 
business  concern,  marks  of  his,  falsified  or  fraudulently  imitated, 
or  products,  fraudulently  falsified  or  imitated  to  the  prejudice 
of  his  rights  or  interests,  may  petition  the  seizure  of  said  arti- 
cles and  the  Judge  will  so  order  under  the  responsibility  of  the 
petitioner  and  with  sufficient  security  in  case  the  seizure  may 
have  been  petitioned  without  right.  It  will  be  optional  with  the 
Judge  to  dispense  with  the  security  when  the  petitioner  is  a 
person  of  known  responsibility. 

ART.  58.  Without  prejudice  to  the  provisions  of  the  pre- 
ceding article  and  to  other  means  that  are  availed  of  in  criminal 
cases,  the  owners  of  usurped,  falsified,  or  imitated  marks  may 
petition,  on  their  responsibility,  before  the  competent  Judges, 


BOLIVIA  97 

that  an  inventory  and  a  description  of  the  goods  or  products 
that  are  found  with  said  marks  in  a  business  house  or  other 
place  may  be  made.  Said  inventory  shall  be  made  by  the  Clerk 
of  the  Court  or  any  Notary  Public  that  the  party  interested 
may  indicate,  the  entry  requiring  that  the  detailed  description 
of  the  goods  or  products  shall  be  made,  and  that  it  shall  be 
signed  by  the  petitioner,  if  he  be  present,  by  the  Clerk  or 
Notary,  on  their  part,  and  by  the  owner  of  the  business  or  store, 
or  in  his  default,  by  two  witnesses. 

ART.  59.  If  several  inventories  are  to  be  made  at  the  same 
time  at  different  places,  the  Judge  may  authorize  for  this  pur- 
pose any  Parochial  Judge  or  Commissioner  of  Police,  on  request 
of  the  petitioner,  and  in  every  case  order,  if  he  so  deems  neces- 
sary, that  an  expert  shall  accompany  the  Clerk  or  deputy,  for 
the  purpose  of  assisting  in  the  description  of  the  inventoried 
goods. 

ART.  60.  If  the  information  provided  for  in  Art.  56  shall 
be  given  in  the  deed  of  inventory,  it  shall  be  included  in  the 
records. 

ART.  61.  To  the  end  that  the  seizure  and  the  inventory, 
whereof  the  preceding  articles  treat,  may  be  ordered,  prior  pre- 
sentation of  the  certificates  of  registration  of  the  mark  shall  be 
required. 

ART.  62.  Fifteen  days  having  elapsed  after  the  making 
of  the  seizure,  the  same  will  be  without  effect  if  the  owner  of 
the  mark  shall  not  lodge  corresponding  action,  save  case  in 
which  the  name  or  domicile  of  the  delinquent  be  unknown,  in 
which  the  destruction  of  the  marks  may  be  petitioned  subject 
to  the  conditions  of  Arts.  50  and  51,  on  proof  of  its  legality, 
barring  action  by  the  proprietor  of  the  mark  against  the 
offender  for  three  years  after  the  destruction  of  the  mark  shall 
have  been  decided  on. 

CHAP.  XI 

THE  OFFICE  OF  INDUSTRIAL  PROPERTY 
ART.  63.     There  shall  correspond  to  the  Office  of  Industrial 

Property,  annexed  to  the  Minister  of  Industry,  the  procedure 

and  grant  of  registry  of  marks  and  other  functions  authorized 

by  this  law. 

ART.  64.     There  shall  be  opened  a  Register  of  Inscriptions 

in  serial  number  of  the  certificates  of  registered  marks,  with 

the  affixing  of  the  mark;  another  for  those  transferred,  and 

another  for  names  and  insignia. 

ART.  65.     Said  Office  will  centralize  the  cases  and  other 

documents  relative  to  marks  of  manufacture  previously  regis- 


98  BOLIVIA 

tered  and  will  arrange  them  duly  and  methodically  in  order  to 
facilitate  their  inspection. 

It  shall  make  an  index  in  alphabetical  order  of  marks  and 
of  owners,  classifying  them,  in  addition,  according  to  classes, 
in  conformity  with  Art.  37. 

CHAP.  XII 

TRANSITORY  PROVISIONS 

ART.  66.  Marks  previously  registered  shall  remain  in  force 
for  a  term  of  ten  years  counting  from  the  date  of  the  grant, 
on  payment  of  the  corresponding  fiscal  fee.  Those  regarding 
which  said  fee  has  been  satisfied  in  advance  shall  remain  in 
force  for  the  whole  term  covered  by  said  payments;  new  pre- 
sentations not  being  possible  of  acceptance  after  the  promulga- 
tion of  this  law. 

Said  terms  having  expired,  renewal  of  the  registry  shall 
be  effected  in  order  to  maintain  the  legal  rights. 

ART.  67.  Cases  under  consideration  may  be  terminated 
in  accordance  with  the  old  regulation,  or  they  may  avail  them- 
selves of  the  provisions  of  the  present  regulatory  law. 

ART.  68.  This  law  shall  become  effective  three  months 
after  its  promulgation. 


BRAZIL 

DECREE  NO.  3343,  OF  OCTOBER  14,  1887,  AS  AMENDED 
BY  DECREE  NO.  1236,  OF  SEPTEMBER  24,  1904 

ARTICLE  1.  A  manufacturer  or  merchant  shall  have  the 
right  to  distinguish  his  merchandise  or  products  by  means  of 
special  marks. 

ART.  2.  Industrial  and  trade  marks  may  consist  of  every- 
thing that  this  law  does  not  prohibit  and  which  may  distinguish 
articles  from  others,  identical  or  similar,  of  different  origin. 

Any  name,  special  or  common  denomination,  firm  or  cor- 
porate title,  and  letters  or  ciphers  only,  will  serve  for  this  pur- 
pose if  invested  with  a  distinctive  form. 

SOLE  PARAGRAPH.  Marks  may  be  used  either  upon  the  arti- 
cles themselves  or  upon  the  receptacles  or  wrappers  of  said 
articles. 

ART.  3.  In  order  to  guarantee  the  exclusive  use  of  said 
marks,  their  registry,  deposit  and  publication  in  accordance 
with  the  present  law  are  indispensable. 

ART.  4.  The  Commercial  Junta  (Council)  or  Inspectoria 
(Board  of  Inspection)  of  the  locality  of  the  establishment,  or 
of  the  principal  one  when  more  than  one  of  the  same  kind  belong 
to  a  single  owner,  is  competent  for  the  registry.  The  Commer- 
cial Junta  of -Rio  de  Janeiro  is  also  competent  for  the  registry 
of  foreign  marks  and  as  the  central  depository  of  those  regis- 
tered in  other  Juntas  or  Inspectorias. 

ART.  5.  To  effect  the  registry  there  is  necessary  a  petition 
from  the  party  interested  or  his  special  attorney,  accompanied 
by  three  specimens  of  the  mark,  containing: 

1)  A  representation  of  what  constitutes  the  mark,  with  all 
its  accessories  and  explanations; 

2)  A  declaration  of  the  class  of  industry  or  trade  for  which 
it  is  intended,  the  occupation  of  the  petitioner,  and  his  place  of 
residence. 

ART.  6.  The  Secretary  of  the  Junta  or  the  clerk  of  the 
Inspectoria  appointed  for  that  purpose  shall  certify  on  each  of 
the  models  the  day  and  hour  of  its  presentation,  and,  should 
the  registry  be  ordered,  he  shall  deposit  one  of  them  in  the 
archives  and  deliver  the  others  to  the  interested  party,  with  a 
note  of  the  registry  and  its  number. 

ART.  7.  Within  thirty  days  the  interested  party  shall  have 
published  in  the  newspaper  that  inserts  the  acts  of  the  Federal 


100  BRAZIL 

or  State  Government,  the  certificate  of  registration  containing 
the  explanation  of  the  characteristics  of  the  mark,  copied  from 
the  declaration  required  by  Art.  5,  No.  1 ;  and  within  sixty  days 
(reckoning  these  terms  from  the  date  of  the  said  registry)  he 
shall  deposit  one  of  the  models  in  the  Commercial  Junta  of  Rio 
de  Janeiro  in  accordance  with  the  terms  of  Art.  4. 

ART.  8.    There  shall  be  prohibited  the  registration  of  a 
mark  that  contains  or  consists  of : 

1)  Coats  of  arms,  armorial  bearings,  decorations  or  insig- 
nia, public  or  official,  domestic  or  foreign,  when  their  use  has 
not  been  duly  authorized; 

2)  A  commercial  name  or  partnership  firm  of  which  the 
petitioner  cannot  lawfully  make  use ; 

3)  The  indication  of  a  fixed  locality  or  establishment  which 
is  not  of  the  origin  of  the  article,  whether  there  be  joined  to  this 
indication  a  fictitious  name  or  another's  name,  or  not; 

4)  Words,  images,  or  representations,  that  involve  offense 
to  individuals  or  to  public  decorum; 

5)  The  reproduction  of  another  mark  already  registered 
for  an  article  of  the  same  kind ; 

6)  The  total  or  partial  imitation  of  a  mark  already  regis- 
tered for  a  product  of  the  same  kind  which  may  mislead  or 
confuse  the  buyer.    The  possibility  of  error  or  confusion  will 
be  considered  to  be  verified  whenever  the  differences  of  the  two 
marks  cannot  be  recognized  without  attentive  comparison  or 
examination. 

ART.  9.    In  the  registration  the  following  rules  shall  be 
observed : 

1)  Priority  in  the  day  or  hour  of  the  presentation  of  the 
mark  establishes  preference  as  to  registration  in  favor  of  the 
petitioner;  in  case  of  the  simultaneous  presentation  of  two  or 
more  identical  or  similar  marks  the  preference  of  that  one  will 
be  admitted  which  has  been  used  or  possessed  for  the  longest 
time,  and  in  default  of  this  requisite  none  will  be  registered 
without  being  modified  by  the  interested  parties; 

2)  In  case  of  doubt  as  to  the  use  or  possession  of  a  mark, 
the  Junta  or  Inspectoria  will  order  the  interested  parties  to 
settle  the  question  before  the  Commercial  Tribunal,  registration 
being  carried  out  in  conformity  with  the  judgment ; 

3)  Should  identical  or  similar  marks,  as  set  forth  in  Art. 
8,  Nos.  5  and  6,  be  registered  in  different  Juntas  or  Inspectorias, 
the  one  which  is  prior  in  date  shall  prevail,  and  in  case  of  simul- 
taneous registry,  either  of  the  interested  parties  may  apply  to 
the  said  Commercial  Tribunal,  which  shall  decide  which  shall 
be  maintained,  having  in  view  the  provisions  of  No.  1  of  this 


BRAZIL  101 

article ; 

4)  From  the  decision  refusing  registration,  an  appeal  can 
be  made,  in  the  Federal  District,  to  the  Court  of  Appeals,  and 
in  the  States  to  the  court  of  superior  jurisdiction,  by: 

i)  Anyone  that  considers  himself  injured  by  it  as  regards 
some  registered  mark; 

ii)  The  interested  party  in  the  cases  named  in  Art.  8,  Nos. 
2  and  3; 

iii)  The  party  injured  in  the  case  specified  in  No.  4,  first 
part; 

iv)  The  public  prosecutor  in  the  two  cases,  Nos.  1  and  4, 
last  part. 

The  term  allowed  for  making  these  appeals  shall  be  five 
days,  reckoning  from  the  publication  of  the  decision ;  but  if  the 
party  does  not  reside  in  the  place  where  the  publication  is  made, 
and  does  not  have  a  special  attorney  there,  the  term  shall  com- 
mence to  run  thirty  days  later. 

ART.  10.  Neither  the  failure  to  lodge  an  appeal  nor  its 
postponement  shall  destroy  the  right  of  any  other  party  to  bring 
suit  in  conformity  with  the  preceding  article: 

1)  For  procuring  the  nullification  of  the  registration  made 
contrary  to  the  provisions  of  Art.  8; 

2)  To  oblige  the  competitor  that  is  entitled  to  the  same  or 
a  similar  name  to  modify  it  so  that  error  or  confusion  may  be 
impossible  (Art.  8,  No.  6,  last  part).    This  action  may  only  be 
brought  by  one  who  can  prove  prior  possession  of  the  mark  or 
name  for  commercial  or  industrial  use,  though  he  has  not  regis- 
tered it,  and  it  expires  by  limitation,  like  that  referring  to  Art. 
8,  Nos.  2,  3  and  4,  first  part,  if  not  brought  within  six  months 
after  the  registry  of  the  mark. 

ART.  11.  The  registration  shall  be  valid  for  all  purposes 
for  fifteen  years,  at  the  end  of  which  it  may  be  renewed,  and  so 
on  thereafter. 

The  registration  shall  be  regarded  as  null  and  void,  if  the 
owner  of  the  registered  mark  shall  not  make  use  of  it  within 
the  term  of  three  years. 

ART.  12.  The  mark  may  only  be  transferred  together  with 
the  line  of  industry  or  trade  for  which  it  has  been  adopted,  after 
it  has  been  duly  entered  in  the  register,  upon  examination  of 
authentic  documents. 

A  like  annotation  shall  be  made  should  the  firms  be  altered 
and  the  mark  still  continue  to  be  used.  In  both  cases  publica- 
tion is  necessary. 

ART.  13.  The  following  persons  shall  be  punished  with 
imprisonment  of  from  six  months  to  one  year  and  a  fine,  in  favor 


102  BRAZIL 

of  the  State,  of  500  to  5,000  milreis: 

1)  Whoever  uses  a  legal  mark  of  another  person  on  prod- 
ucts of  false  origin; 

2)  Whoever  uses  a  wholly  or  partly  counterfeited  mark 
belonging  to  another  person; 

3)  Whoever  sells  or  offers  for  sale  articles  bearing  the 
mark  of  another,  the  owner  of  which  is  not  the  producer  of  said 
articles ; 

4)  Whoever  sells  or  offers  for  sale  articles  bearing  a  mark 
of  another,  wholly  or  partly  counterfeited; 

5)  Whoever  reproduces  wholly  or  in  part,  by  whatever 
means,  any  industrial  or  trade  mark  duly  registered  and  pub- 
lished, without  permission  of  the  owner  or  his  legal  represen- 
tative ; 

6)  Whoever  imitates  an  industrial  or  trade  mark,  in  such 
a  manner  that  the  consumer  may  be  deceived ; 

7)  Whoever  uses  a  mark  so  imitated; 

8)  Whoever  sells  or  offers  for  sale  articles  bearing  an 
imitated  mark; 

9)  Whoever  uses  a  commercial  name  or  firm  that  does  not 
belong  to  him,  whether  it  forms  part  of  a  registered  mark  or  not. 

PARAGRAPH  1.  To  constitute  the  imitation  referred  to  in 
Nos.  6  to  9  of  this  article  it  is  not  necessary  that  the  resemblance 
of  the  mark  should  be  complete.  It  is  sufficient,  whatever  the 
differences,  that  there  should  be  a  possibility  of  mistake  or  con- 
fusion, as  set  forth  in  Art.  8,  No.  6,  last  part. 

PARAGRAPH  2.  The  usurpation  of  the  commercial  name  or 
firm  referred  to  in  Nos.  5  and  6  shall  be  considered  as  existing, 
whether  the  reproduction  be  entire,  or  whether  there  be  addi- 
tions, omissions,  or  alterations,  provided  that  there  be  the  same 
possibility  of  mistake  or  confusion  on  the  part  of  the  consumer. 

ART.  14.  The  following  persons  shall  be  punished  with 
a  fine  of  from  100  to  500  milreis  in  favor  of  the  State : 

1)  Whoever,  without  due  authority,  uses,  as  an  industrial 
or  trade  mark,  arms,  armorial  bearings,  or  public  or  official 
insignia,  domestic  or  foreign; 

2)  Whoever  uses  a  mark  that  offends  public  decorum; 

3)  Whoever  uses  an  industrial  or  trade  mark  that  contains 
an  indication  of  a  locality  or  establishment  that  is  not  that  of 
the  place  of  origin  of  the  merchandise  or  product,  whether  there 
be  joined  to  this  indication  another's  name  or  a  fictitious  one 
or  not; 

4)  Whoever  sells  or  offers  for  sale  merchandise  or  products 
bearing  marks  such  as  are  set  forth  in  Nos.  1  and  2  of  this 
article ; 


BEAZIL  103 

5)  Whoever  sells  or  offers  for  sale  merchandise  or  products 
such  as  are  set  forth  in  No.  3. 

ART.  15.  Whoever  uses  a  mark  containing  anything  per- 
sonally offensive,  or  who  sells  or  offers  for  sale  articles  bearing 
such  a  mark,  shall  be  visited  with  the  penalties  of  the  preceding 
article. 

ART.  16.  Criminal  action  against  offenses  named  in  Nos. 
1,  2  and  4  of  Art.  14,  shall  be  instituted  by  the  Public  Prosecutor 
of  the  district  where  articles  are  found  which  bear  the  marks 
therein  mentioned. 

Any  producer  of  or  dealer  in  a  like  article  residing  in  the 
place  whence  it  comes  and  the  owner  of  the  establishment  falsely 
indicated  are  competent  to  bring  action  against  the  offenders 
named  in  Nos.  3  and  5,  and  the  party  offended  or  the  party 
interested  against  those  named  in  Arts.  14  and  15. 

ART.  17.  Repetition  of  the  offense  shall  be  punished  with 
double  the  penalties  fixed  in  Arts.  13, 14  and  15,  unless  ten  years 
shall  have  elapsed  since  the  previous  condemnation  for  any  of 
the  offenses  named  in  this  law. 

ART.  18.  The  said  penalties  shall  not  exempt  the  delin- 
quents from  paying  indemnity  for  the  loss  caused  by  them,  and 
which  the  parties  injured  may  demand  by  proper  action. 

ART.  19.  Sentences  pronounced  on  the  offenses  embraced 
in  this  law  shall  be  published  in  full  by  the  successful  party  in 
the  same  journal  in  which  the  registries  are  published;  other- 
wise they  shall  not  be  enforced. 

ART.  20.     The  party  interested  may  demand: 

1)  A  search  or  inspection  to  ascertain  the  existence  of 
counterfeit  or  imitation  marks,  or  of  merchandise  or  products 
that  bear  them; 

2)  The  seizure  and  destruction  of  counterfeit  or  imitation 
marks  in  the  workshops  in  which  they  are  prepared,  or  when- 
ever they  may  be  found  before  they  are  used  for  a  criminal 
purpose ; 

3)  The  destruction  of  counterfeit  or  imitation  marks  on 
the  packages  or  articles  bearing  them  before  they  are  cleared 
from  the  custom-house,  even  though  the  wrappers  and  the  mer- 
chandise or  products  themselves  may  thereby  be  damaged; 

4)  The  seizure  and  deposit  of  merchandise  or  products 
bearing  a  counterfeit  or  imitation  mark  or  one  indicating  a  false 
origin,  as  set  forth  in  Art.  8,  No.  3. 

PARAGRAPH  1.  The  seizure  and  deposit  only  take  place  as 
preliminaries  of  an  action,  and  shall  be  of  no  effect  unless  it  be 
instituted  within  thirty  days. 

PARAGRAPH  2.     The  articles  seized  will  serve  to  guarantee 


104  BRAZIL 

the  payment  of  the  fine  and  the  indemnity  due  the  party,  for 
which  purpose  they  shall  be  sold  at  public  auction,  in  the  course 
of  the  action,  if  they  easily  deteriorate,  or  during  the  execution, 
except  products  which  are  injurious  to  the  public  health,  which 
shall  be  destroyed. 

ART.  21.  Seizure  of  counterfeited  products  bearing  a  false 
mark  or  a  legal  one  fraudulently  used  shall  be  the  basis  of  the 
process. 

ART.  22.  Seizure  shall  be  made  at  the  request  of  the  party 
or  ex  officio: 

a)  At  the  request  of  the  party,  by  any  police  authority  or 
the  Judge  of  the  Civil  or  Criminal  Court,  in  the  Federal  Dis- 
trict, and  in  the  States  by  the  authorities  competent  for  the 
search ; 

b)  Ex  officio. — By  the  custom-houses  at  the  time  the  inspec- 
tion of  the  goods  is  made;  by  the  collectors  of  consumption 
taxes  whenever  they  find  such  falsifications  in  the  establish- 
ments  that   they   visit;   by   any   authority,   when   in   making 
searches,  he  meets  with  falsifications. 

ART.  23.  After  the  seizure  ex  officio  has  been  made  the 
owners  of  the  mark  or  their  representatives  shall  be  notified 
in  order  that  they  may  bring  an  action  against  the  responsible 
parties,  the  term  of  thirty  days  being  granted  them  for  this 
purpose,  under  penalty  of  the  seizure  becoming  null  and  void. 

ART.  24.  The  search  and  seizure  at  the  request  of  the 
party  shall  be  ordered,  after  the  petitioner  has  given  his  bond 
to  the  authority  ordering  the  search. 

SOLE  PARAGRAPH.  In  this  bond  the  petitioner  shall  bind 
himself  to  pay  the  losses  and  damages  caused  by  the  search, 
if  the  result  is  negative  and  the  defendant  proves  that  the  said 
petitioner  acted  in  bad  faith. 

ART.  25.  After  the  seizure  has  been  made,  all  books  found 
in  the  place  shall  be  collected,  together  with  the  machinery  and 
other  articles  which  were  used  directly  or  indirectly  for  the 
falsification. 

ART.  26.  The  authority  that  makes  the  seizure  is  compe- 
tent for  the  concession  of  the  security. 

ART.  27.  In  the  act  of  the  seizure  the  persons  referred  to 
in  Art.  33  of  the  present  law  shall  be  arrested  in  flagrante 
delicto. 

ART.  28.  After  the  seizure  has  been  made,  the  corpus 
delicti  shall  be  proceeded  with,  in  order  to  prove  the  commission 
of  the  offense. 

ART.  29.  Within  thirty  days,  reckoned  from  the  date  of 
the  seizure,  the  complaint  against  those  responsible  for  the 


BRAZIL  105 

offense  shall  be  presented  accompanied  by  the  minutes  of  the 
seizure,  the  corpus  delicti,  the  statement  of  the  arrest  in  fla- 
grante  delicto,  if  it  has  taken  place,  a  list  of  witnesses  and  a 
memorandum  of  the  steps  to  be  taken. 

SOLE  PARAGRAPH.  In  the  Federal  District  the  court  compe- 
tent for  the  cognizance  of  the  action  is  the  Civil  and  Criminal 
Court,  which  shall  observe  the  form  of  procedure  established 
in  Art.  101,  sole  paragraph,  of  Decree  No.  1030,  of  November  14, 
1890.  In  the  States  the  procedure  shall  be  that  established  by 
their  respective  laws,  the  court  of  a  single  judge  being  always 
competent  for  the  trial  in  first  instance. 

ART.  30.  The  tribunal  competent  for  the  trial  of  actions 
referred  to  in  this  law  is  that  of  the  domicile  of  the  defendant 
or  of  the  place  in  which  were  found  the  merchandise  bearing 
the  counterfeit  or  imitation  mark  or  a  legal  mark  improperly 
used. 

ART.  31.  The  jurisdiction  referred  to  in  Art.  12  of  Law 
No.  221,  of  November  20,  1894,  is  relative  to  Art.  60,  letter  (f), 
of  the  Constitution,  in  the  cases  of  a  convention  or  treaty  of 
reciprocity. 

ART.  32.  The  following  are  jointly  responsible  for  the 
offenses  specified  in  Arts.  13,  14  and  15: 

1)  The  owner  of  the  workshop  where  the  counterfeit  or 
imitation  marks  are  prepared; 

2)  The  person  having  them  under  his  custody; 

3)  The  person  selling  the  same; 

4)  The  owner  of  or  person  living  in  the  house  or  establish- 
ment in  which  the  articles  are  deposited,  provided  they  cannot 
state  who  the  owner  is; 

5)  Whoever  has  bought  the  goods  from  an  unknown  party 
or  is  unable  to  prove  the  place  of  origin  of  the  article  or 
product. 

ART.  33.  The  provisions  of  this  law  shall  be  applicable 
to  Brazilians  or  foreigners  whose  establishments  are  without 
the  national  territory,  under  the  following  conditions: 

1)  That  there  exists  between  the  Union  and  the  nation,  in 
whose  territory  are  the  said  establishments,  a  diplomatic  con- 
vention securing  reciprocity  of  guarantee  for  Brazilian  marks ; 

2)  That  the  marks  have  been  registered  in  conformity  with 
local  law; 

3)  That  the  respective  specimen  and  certificate  of  regis- 
tration have  been  deposited  in  the  Junta  Commercial  of  Rio 
de  Janeiro; 

4)  That  the  certificate  and  explanation  of  the  mark  have 
been  published  in  the  Diario  Official. 


106  BEAZIL 

SOLE  PARAGRAPH.  Foreigners  that,  instead  of  depositing 
the  certificate  of  registration  made  in  their  respective  country, 
petition  directly  the  registration  of  their  mark  in  Brazil,  shall 
enjoy  the  guaranties  of  the  present  law. 

ART.  34.  In  case  of  compliance  with  requirements  Nos. 
2  to  4  of  the  preceding  article,  the  provision  in  Art.  9,  No.  3, 
shall  have  effect  in  favor  of  marks  registered  in  foreign  coun- 
tries that  have  signed  the  convention  promulgated  by  decree 
No.  9233  of  June  28, 1884,  or  that  have  declared  their  adherence 
to  it,  for  the  space  of  four  months,  counting  from  the  day  when 
the  registration  is  made  according  to  local  law. 

ART.  35.  The  guarantees  given  by  this  law  are  applicable 
to  the  marks  registered  in  conformity  with  former  laws. 

ART.  36.  The  Government  shall  revise  Regulations  No. 
9828,  of  1887,  putting  them  in  accord  with  the  provisions  of  the 
present  law. 

ART.  37.  Articles  353  to  355  of  the  Penal  Code  are  hereby 
changed  in  accordance  with  the  provision  of  Arts.  13,  14  and 
15  of  the  present  law. 

ART.  38.  All  provisions  to  the  contrary  are  hereby 
revoked. 


BRITISH  CENTRAL  AFRICA  PROTEC- 
TORATE  (NYASALAND) 

ORDINANCE  NO.  9  [OF  DECEMBER  4],  1903 

Short  title 

1.  This  Ordinance  may  be  cited  as  ' '  The  Patents,  Designs, 
and  Trade  Marks  Ordinance,  1903."* 

Registration.    Substantive  and  Adjactive  Law 

2.  The  Registrar  of  the  British  Central  Africa  Protec- 
torate shall  be  Registrar  of  Patents,  Designs,  and  Trade  Marks 
within  the  Protectorate,  and  shall  for  that  purpose  have  all  the 
powers  and  authority  of  the  Comptroller-General  of  Patents  in 
England  under  the  Patents,  Designs,  and  Trade  Marks  Act, 
1883  to  1901,  or  under  any  statutes  amending  or  substituted  for 
the  said  statutes. 

(a)  Subject  to  the  other  provisions  of  this  Ordinance,  the 
procedure   ...  in  registering  or  opposing  or  amending  the 
registration  of  ...  a  trade  mark  shall  be  that  in  force  in  Eng- 
land under  the  Patents,  Designs,  and  Trade  Marks  Acts,  1883 
to  1901,  or  under  any  statute  amending  or  substituted  for  the 
said  statutes. 

(b)  The  definition  of  and  the  law  relating  to  the  subject- 
matter  of  ...  trade  marks  and  the  definition  of  and  the  law 
relating  to  true  and  first  .  .  .  grantees,  assignees,  and  licencees 
shall  be  those  in  force  in  England  as  aforesaid. 

(c)  The  legal  remedies  of  any  person  claiming  an  interest 
in  any  .   .   .  trade  mark  shall  be  those  in  force  in  England  as 
aforesaid,  except  that  in  the  aforesaid  statutes,  "The  Court" 
shall  mean  His  Majesty's  High  Court  of  British  Central  Africa; 
the  "Comptroller"  shall  mean  the  Registrar  of  British  Central 
Africa  Protectorate;  the  "Board  of  Trade"  shall  mean  the 
Commissioner;  "Law  Officer"  shall  mean  the  Crown  Prosecutor. 

Fees,  fines,  penalties 

4.    The  fees,  fines,  and  penalties  under  this  Ordinance  shall 
be  those  in  force  in  England  from  time  to  time. 

*  Provisions  not  relating  to  trade  marks  are  omitted. 


BRITISH  GUIANA 

ORDINANCE  NO.  27  [OF  NOVEMBER  24],  1914 

Short  Title 

1.  This  Ordinance  may  be  cited  as  The  Trade  Marks  Ordi- 
nance, 1914. 

DEFINITIONS 
Interpretation  of  Terms 

2.  In  this  Ordinance — 

A  "mark"  includes  a  device,  brand,  heading,  label,  ticket, 
name,  signature,  word,  letter,  numeral,  or  any  combination 
thereof : 

A  "trade  mark"  means  a  mark  used  or  proposed  to  be 
used  upon  or  in  connection  with  goods  for  the  purpose  of  indi- 
cating that  they  are  the  goods  of  the  proprietor  of  such  trade 
mark  by  virtue  of  manufacture,  selection,  certification,  dealing 
with  or  offering  for  sale: 

A  ' ' registrable  trade  mark"  means  a  trade  mark  which  is 
capable  of  registration  under  this  Ordinance : 

"The  Registrar"  means  the  Registrar  of  British  Guiana: 

"The  seal  of  the  Registrar"  means  the  seal  of  the  office  in 
which  the  Register  of  Trade  Marks  is  kept; 

"The  Register"  means  the  register  of  trade  marks  kept 
under  this  Ordinance: 

A  "registered  trade  mark"  means  a  trade  mark  which  is 
actually  upon  the  register: 

' '  The  Court ' '  means  the  Supreme  Court  of  British  Guiana. 

SEAL 

3.  The  Registrar  shall  use  a  seal  having  a  device  and  im- 
pression of  the  Royal  Arms  with  a  label  surrounding  the  same 
and    the    inscription    "Registrar    of    Trade    Marks,    British 
Guiana,"  and  the  use  of  such  seal  from  and  after  the  first  day 
of  January,  1915,  is  hereby  validated  and  authorized. 

REGISTER  OF  TRADE  MARKS 

4.  There  shall  be  kept  for  the  purposes  of  this  Ordinance 
at  the  Office  of  the  Registrar  in  Georgetown  a  book  called  the 
Register  of  Trade  Marks,  wherein  shall  be  entered  all  regis- 
tered trade  marks  with  the  dates  of  their  registration,  the 
names  and  addresses  of  their  proprietors,  notifications  of  assign- 
ments and  transmissions,  disclaimers,  conditions,  limitations, 
and  such  other  matters  relating  to  such  trade  marks  as  may  be 
prescribed.    The  register  shall  be  kept  under  the  control  and 


BRITISH  GUIANA  109 

management  of  the  Registrar. 

Trust  Not  To  Be  Entered  on  Register 

5.  There  shall  not  be  entered  in  the  register  any  notice  of 
any  trust  expressed,  implied,  or  constructive,  nor  shall  any  such 
notice  be  receivable  by  the  Registrar. 

Inspection  of  and  Extract  from  Register 

6.  The  register  shall  during  office  hours  be  open  to  the 
inspection  of  the  public,  subject  to  such  regulations  as  may  be 
prescribed;  and  certified  copies,  sealed  with  the  seal  of  the 
Registrar,  of  any  entry  therein  shall  be  given  to  any  person 
requiring  the  same  on  payment  of  the  prescribed  fee. 

REGISTEABLE  TEADE  MARKS 
Trade  Mark  Must  Be  for  Particular  Goods 

7.  A  trade  mark  must  be  registered  in  respect  of  particu- 
lar goods  or  classes  of  goods. 

Registrable  Trade  Marks 

8.  A  registrable  trade  mark  must  contain  or  consist  of  at 
least  one  of  the  following  essential  particulars: 

(1)  The  name  of  a  company,  individual,  or  firm  represented 
in  a  special  or  particular  manner ; 

(2)  The  signature  of  the  applicant  for  registration  or  of 
some  predecessor  in  his  business; 

(3)  An  invented  word  or  invented  words; 

(4)  A  word  or  words  having  no  direct  reference  to  the 
character  or  quality  of  the  goods,  and  not  being  according  to 
its  ordinary  signification  a  geographical  name  or  a  surname ; 

(5)  Any  other  distinctive  mark; 

but  a  name,  signature,  or  word  or  words,  other  than  such  as 
fall  within  the  descriptions  in  the  above  paragraphs  (1),  (2), 
(3),  and  (4),  shall  not,  except  by  order  of  the  Court,  be  deemed 
a  distinctive  mark. 

Provided  always,  that  any  special  or  distinctive  word  or 
words,  letter,  numeral,  or  combination  of  letters  or  numerals 
used  as  a  trade  mark  by  the  applicant  or  his  predecessors  in 
business  before  the  13th  August,  1875,  which  has  continued  to 
be  used  (either  in  its  original  form  or  with  additions  or  altera- 
tions not  substantially  affecting  the  identity  of  the  same)  down 
to  the  date  of  the  application  for  registration,  shall  be  regis- 
trable as  a  trade  mark  under  this  Ordinance,  if  it  is  already 
registered  in  the  United  Kingdom  as  an  old  mark  used  before 
the  said  date. 

For  the  purposes  of  this  section  "distinctive"  shall  mean 
adapted  to  distinguish  the  goods  of  the  proprietor  of  the  trade 
mark  from  those  of  other  persons. 


110  BRITISH  GUIANA 

In  determining  whether  a  trade  mark  is  so  adapted,  the 
Registrar  may,  in  the  case  of  a  trade  mark  in  actual  use,  take 
into  consideration  the  extent  to  which  such  user  has  rendered 
such  trade  mark  in  fact  distinctive  for  the  goods  with  respect 
to  which  it  is  registered  or  proposed  to  be  registered. 

Coloured  Trade  Marks 

9.  A  trade  mark  may  be  limited  in  whole  or  in  part  to  one 
or  more  specified  colours,  and  in  such  case  the  fact  that  it  is 
so  limited  shall  be  taken  into  consideration  by  any  Tribunal 
having  to  decide  on  the  distinctive  character  of  such  trade  mark. 
If  and  so  far  as  a  trade  mark  is  registered  without  limitation 
of  colour,  it  shall  be  deemed  to  be  registered  for  all  colours. 

Restriction  on  Registration 

10.  It  shall  not  be  lawful  to  register  as  a  trade  mark  or 
part  of  a  trade  mark  any  matter  the  use  of  which  would  by 
reason  of  its  being  calculated  to  deceive  or  otherwise  be  dis- 
entitled to  protection  in  a  Court  of  Justice,  or  would  be  con- 
trary to  law  or  morality,  or  any  scandalous  design. 

REGISTBATION  OF  TKADE  MARKS 
Application  for  Registration 

11.  (1)  Any  person  claiming  to  be  the  proprietor  of  a 
trade  mark  who  is  desirous  of  registering  the  same  must  apply 
in  writing  to  the  Registrar  in  the  prescribed  manner. 

(2)  Subject  to  the  provisions  of  this  Ordinance  the  Regis- 
trar may  refuse  an  application  or  may  accept  it  absolutely  or 
subject  to  conditions,  amendments,  or  modifications. 

(3)  In  case  of  any  such  refusal  or  conditional  acceptance 
the  Registrar  shall,  if  required  by  the  applicant,  state  in  writing 
and  communicate  to  the  applicant  the  grounds  of  his  decision 
and  the  materials  used  by  him  in  arriving  at  the  same,  and  such 
decision  shall  be  subject  to  appeal  to  the  Court.     The  Court 
shall,  if  required,  hear  the  applicant  and  the  Registrar,  and  shall 
make  an  order  determining  whether,  and  subject  to  what  con- 
ditions, amendments,  or  modifications,  if  any,  the  application  is 
to  be  accepted. 

(4)  Appeals  under  this  section  shall  be  heard  on  the  ma- 
terials so  stated  by  the  Registrar  to  have  been  used  by  him  in 
arriving  at  his  decision,  and  no  further  grounds  of  objection 
to  the  acceptance  of  the  application  shall  be  allowed  to  be  taken 
by  the  Registrar,  other  than  those  stated  by  him,  except  by  leave 
of  the  Court.    Where  any  further  grounds  of  objection  are  taken 
the  applicant  shall  be  entitled  to  withdraw  his  application  with- 
out payment  of  costs  on  giving  notice  as  herein  prescribed. 

(5)  The  Registrar  or  the  Court,  as  the  case  may  be,  may 


BEITISH  GUIANA  111 

at  any  time,  whether  before  or  after  acceptance,  correct  any 
error  in  or  in  connection  with  the  application,  or  may  permit 
the  applicant  to  amend  his  application  upon  such  terms  as  he 
or  it  may  think  fit. 

Advertisement  of  Registration 

12.  When  an  application  for  registration  of  a  trade  mark 
has  been  accepted,  whether  absolutely  or  subject  to  conditions, 
the  applicant  shall,  as  soon  as  may  be  after  such  acceptance, 
cause  the  application,  as  accepted,  to  be  advertised  in  the  pre- 
scribed manner.    Such  advertisement  shall  set  forth  all  condi- 
tions subject  to  which  the  application  has  been  accepted. 

Opposition  to  Registration 

13.  (1)  Any  person  may,  within  the  prescribed  time  from 
the  date  of  the  advertisement  of  an  application  for  registration 
of  a  trade  mark,  give  notice  to  the  Registrar  of  opposition  to 
such  registration. 

(2)  Such  notice  shall  be  given  in  writing  in  the  prescribed 
manner  and  shall  include  a  statement  of  the  grounds  of  oppo- 
sition. 

(3)  The  Registrar  shall  send  a  copy  of  such  notice  to  the 
applicant,  and,  within  the  prescribed  time  after  the  receipt  of 
such  notice,  the  applicant  shall  send  to  the  Registrar,  in  the 
prescribed  manner,  a  counter-statement  of  the  grounds  on  which 
he  relies  for  his  application,  and  if  he  does  not  do  so  he  shall 
be  deemed  to  have  abandoned  his  application. 

(4)  If  the  applicant  sends  such  counter-statement  within 
the  prescribed  time  the  Registrar  shall  furnish  a  copy  thereof 
to  the  persons  giving  notice  of  opposition,  and  shall  after  hear- 
ing the  parties,  if  so  required,  and  considering  the  evidence, 
decide  whether,  and  subject  to  what  conditions,  registration  is 
to  be  permitted. 

(5)  The  decision  of  the  Registrar  shall  be  subject  to  appeal 
to  the  Court. 

(6)  An  appeal  under  this  section  shall  be  made  in  the  pre- 
scribed manner  and  on  such  appeal  the  Court  shall,  if  required, 
hear  the  parties  and  the  Registrar,  and  shall  make  an  order 
determining  whether  and  subject  to  what  conditions,  if  any, 
registration  is  to  be  permitted. 

(7)  On  the  hearing  of  any  such  appeal  any  party  may, 
either  in  the  manner  prescribed,  or  by  special  leave  of  the  Court, 
bring  forward  further  material  for  the  consideration  of  the 
Court. 

(8)  In  proceedings  under  this  section  no  further  grounds 
of  objection  to  the  registration  of  a  trade  mark  shall  be  allowed 
to  be  taken  by  the  opponent  or  Registrar  other  than  those  stated 


112  BRITISH  GUIANA 

by  the  opponent  as  hereinabove  provided,  except  by  leave  of 
the  Court.  Where  any  further  grounds  of  objection  are  taken 
the  applicant  shall  be  entitled  to  withdraw  his  application  with- 
out payment  of  the  costs  of  the  opponent  on  giving  notice  as 
prescribed. 

(9)  In  any  appeal  under  this  section,  the  Court  may,  after 
hearing  the  Registrar,  permit  the  trade  mark  proposed  to  be 
registered  to  be  modified  in  any  manner  not  substantially  affect- 
ing the  identity  of  such  trade  mark,  but  in  such  case  the  trade 
mark  as  so  modified  shall  be  advertised  in  the  prescribed  man- 
ner before  being  registered. 

(10)  The  Registrar  or,  in  the  case  of  an  appeal,  the  Court 
shall  have  the  power  in  proceedings  under  this  section  to  award 
to  any  party  costs  of  such  proceedings  or  any  part  thereof  and 
to  direct  how  and  by  what  parties  and  on  what  scale  they  are 
to  be  paid.    Such  costs  shall  be  taxed  before  the  Registrar  of 
the  Supreme  Court  and  shall  be  recoverable  in  the  same  manner 
as  costs  in  an  action. 

(11)  If  a  party  giving  notice  of  opposition  or  of  appeal 
neither  resides  nor  carries  on  business  in  the  Colony,  the  Regis- 
trar or  the  Court  may  require  such  party  to  give  security  for 
costs  of  the  proceedings  before  it,  relative  to  such  opposition 
or  appeal  and,  in  default  of  such  security  being  duly  given, 
may  treat  the  opposition  or  appeal  as  abandoned. 

Disclaimers 

14.  If  a  trade  mark  contains  parts  not  separately  regis- 
tered by  the  proprietor  as  trade  marks,  or  if  it  contains  matter 
common  to  the  trade  or  otherwise  of  a  non-distinctive  character, 
the  Registrar  or  the  Court,  in  deciding  whether  such  trade  mark 
shall  be  entered  or  shall  remain  upon  the  register,  may  require  as 
a  condition  of  its  being  upon  the  register  that  the  proprietor  shall 
disclaim  any  right  to  the  exclusive  use  of  any  part  or  parts  of 
such  trade  mark,  or  of  all  or  any  portion  of  such  matter,  to  the 
exclusive  use  of  which  the  Registrar  or  the  Court  holds  him 
not  to  be  entitled,  or  that  he  shall  make  such  other  disclaimer 
as  the  Registrar  or  the  Court  may  consider  needful  for  the 
purpose  of  defining  his  rights  under  such  registration:    Pro- 
vided always  that  no  disclaimer  upon  the  register  shall  affect 
any  rights  of  the  proprietor  of  a  trade  mark  except  such  as 
arise  out  of  the  registration  of  the  trade  mark  in  respect  of 
which  the  disclaimer  is  made. 

Date  of  Registration 

15.  When  an  application  for  registration  of  a  trade  mark 
has  been  accepted  and  has  not  been  opposed,  and  the  time  for 
notice  of  opposition  has  expired,  or,  having  been  opposed,  the 


'  M  i  tiv  r 

FI8*'  -'"3BERGO, 

!'    *  '      " 

BRITISH  GUIANA  113 

opposition  has  been  decided  in  favour  of  the  applicant,  the 
Registrar  shall  register  the  said  trade  mark,  and  the  trade  mark 
when  registered  shall  be  registered  as  of  the  date  of  the  applica- 
tion for  registration,  and  such  date  shall  be  deemed  for  the  pur- 
poses of  this  Ordinance  to  be  the  date  of  registration. 
Certificate  of  Registration 

16.  On  the  registration  of  a  trade  mark  the  Registrar  shall 
issue  to  the  applicant  a  certificate  in  the  prescribed  form  of  the 
registration  of  such  trade  mark  under  the  hand  and  seal  of  the 
Registrar. 

Non-completion  of  Registration 

17.  Where  registration  of  a  trade  mark  is  not  completed 
within  twelve  months  from  the  date  of  the  application  by  reason 
of  default  on  the  part  of  the  applicant,  the  Registrar  may,  after 
giving  notice  of  the  non-completion  to  the  applicant  in  writing 
in  the  prescribed  manner,  treat  the  application  as  abandoned 
unless  it  is  completed  within  the  time  specified  in  that  behalf  in 
such  notice. 

IDENTICAL  TRADE  MARKS 
Identical  Maries 

18.  Except  in  the  case  of  trade  marks  in  use  before  13th 
August,  1875,  which  are  registered  in  the  United  Kingdom  as 
old  marks  used  before  the  said  date,  no  trade  mark  shall  be 
registered  in  respect  of  any  goods  or  description  of  goods  which 
is  identical  with  one  belonging  to  a  different  proprietor  which 
is  already  on  the  register  with  respect  to  such  goods  or  de- 
scription of  goods,  or  so  nearly  resembling  such  a  trade  mark 
as  to  be  calculated  to  deceive. 

Rival  Claims  to  Identical  Marks 

19.  Where  each  of  several  persons  claims  to  be  proprietor 
of  the  same  trade  mark,  or  of  nearly  identical  marks  in  respect 
of  the  same  goods  or  description  of  goods,  and  to  be  registered 
as  such  proprietor,  the  Registrar  may  refuse  to  register  any 
of  them  until  their  rights  have  been  determined  by  the  Court, 
or  have  been  settled  by  agreement  in  a  manner  approved  by 
him  or  on  appeal  by  the  Court. 

Concurrent  User 

20.  In  case  of  honest  concurrent  user  or  of  other  special 
circumstances  which,  in  the  opinion  of  the  Court,  make  it  proper 
so  to  do,  the  Court  may  permit  the  registration  of  the  same 
trade  mark,  or  of  nearly  identical  trade  marks,  for  the  same 
goods  or  description  of  goods  by  more  than  one  proprietor,  sub- 
ject to  such  conditions  and  limitations,  if  any,  as  to  mode  or 
place  of  user  or  otherwise,  as  it  may  think  it  right  to  impose. 


114  BRITISH  GUIANA 

ASSIGNMENT 
Assignment  and  Transmission  of  Trade  Marks 

21.  A  trade  mark  when  registered  shall  be  assigned  and 
transmitted  only  in  connection  with  the  goodwill  of  the  business 
concerned  in  the  goods  for  which  it  has  been  registered,  and 
shall  be  determinable  with  that  goodwill.    But  nothing  in  this 
section  contained  shall  be  deemed  to  affect  the  right  of  the  pro- 
prietor of  a  registered  trade  mark  to  assign  the  right  to  use 
the  same  in  any  British  possession  or  protectorate  or  foreign 
country  in  connection  with  any  goods  for  which  it  is  registered 
together  with  the  goodwill  of  the  business  therein  in  such  goods. 

Apportionment  of  Marks  on  Dissolution  of  Partnership 

22.  In  any  case  where  from  any  cause,  whether  by  reason 
of  dissolution  of  partnership  or  otherwise,  a  person  ceases  to 
carry  on  business,  and  the  goodwill  of  such  person  does  not  pass 
to  one  successor  but  is  divided,  the  Registrar  may  (subject  to 
the  provisions  of  this  Ordinance  as  to  associated  trade  marks), 
on  the  application  of  the  parties  interested,  permit  an  appor- 
tionment of  the  registered  trade  marks  of  the  person  among  the 
persons  in  fact  continuing  the  business,  subject  to  such  condi- 
tions and  modifications,  if  any,  as  he  may  think  necessary  in 
the  public  interest.    Any  decision  of  the  Registrar  under  this 
section  shall  be  subject  to  appeal  to  the  Court. 

ASSOCIATED  TRADE  MARKS 

23.  If  application  is  made  for  the  registration  of  a  trade 
mark  so  closely  resembling  a  trade  mark  of  the  applicant  al- 
ready on  the  register  for  the  same  goods  or  description  of 
goods  as  in  the  opinion  of  the  Registrar  to  be  calculated  to  de- 
ceive or  cause  confusion  if  used  by  a  person  other  than  the 
applicant,  the  Tribunal  hearing  the  application  may  require  as 
a  condition  of  registration  that  such  trade  marks  shall  be  en- 
tered on  the  register  as  associated  trade  marks. 

Combined  Trade  Marks 

24.  If  the  proprietor  of  a  trade  mark  claims  to  be  entitled 
to  the  exclusive  use  of  any  portion  of  such  trade  mark  sepa- 
rately, he  may  apply  to  register  the  same  as  separate  trade 
marks.    Each  such  separate  trade  mark  must  satisfy  all  the 
conditions  and  shall  have  all  the  incidents  of  an  independent 
trade  mark,  except  that,  when  registered,  it  and  the  trade  mark 
of  which  it  forms  a  part  shall  be  deemed  to  be  associated  trade 
marks  and  shall  be  entered  on  the  register  as  such,  but  the  user 
of  the  whole  trade  mark  shall  for  the  purposes  of  this  Ordinance 
be  deemed  to  be  also  a  user  of  such  registered  trade  marks 
belonging  to  the  same  proprietor  as  it  contains. 


BRITISH  GUIANA  115 

Series  of  Trade  Marks 

25.  When  a  person  claiming  to  be  the  proprietor  of  several 
trade  marks  for  the  same  description  of  goods  which,  while 
resembling  each  other  in  the  material  particulars  thereof,  yet 
differ  in  respect  of — 

(a)  statement  of  the  goods  for  which  they  are  respectively 
used  or  proposed  to  be  used;  or 

(b)  statements   of  number,  price,  quality,   or  names   of 
places;  or 

(c)  other  matter  of  a  non-distinctive  character  which  does 
not  substantially  affect  the  identity  of  the  trade  mark;  or 

(d)  colour; 

seeks  to  register  such  trade  marks,  they  may  be  registered  as 
a  series  in  one  registration.  All  the  trade  marks  in  a  series  of 
trade  marks  so  registered  shall  be  deemed  to  be,  and  shall  be 
registered  as,  associated  trade  marks. 

Assignment  and  User  of  Associated  Trade  Marks 

26.  Associated  trade  marks  shall  be  assignable  or  trans- 
missible only  as  a  whole  and  not  separately,  but  they  shall  for 
all  other  purposes  be  deemed  to  have  been  registered  as  separate 
trade  marks.    Provided  that,  where  under  the  provisions  of  this 
Ordinance  user  of  a  registered  trade  mark  is  required  to  be 
proved  for  any  purpose,  the  Registrar  or  the  Court  may,  if  and 
so  far  as  it  shall  think  right,  accept  user  of  an  associated  regis- 
tered trade  mark,  or  of  the  trade  mark  with  additions  or  altera- 
tions not  substantially  affecting  its  identity,  as  an  equivalent 
for  such  user. 

RENEWAL  OF  REGISTRATION 
Duration  of  Registration 

27.  The  registration  of  a  trade  mark  shall  be  for  a  period 
of  fourteen  years,  but  may  be  renewed  from  time  to  time  in 
accordance  with  the  provisions  of  this  Ordinance. 

Renewal  of  Registration 

28.  The  Registrar  shall,  on  application  made  by  the  regis- 
tered proprietor  of  a  trade  mark  in  the  prescribed  manner  and 
within  the  prescribed  period,  renew  the  registration  of  such 
trade  mark  for  a  period  of  fourteen  years  from  the  expiration 
of  the  original  registration  or  of  the  last  renewal  of  registra- 
tion, as  the  case  may  be,  which  date  is  herein  termed  "the  ex- 
piration of  the  last  registration." 

Procedure  on  Expiry  of  Period  of  Registration 

29.  At  the  prescribed  time  before  the  expiration  of  the 
registration  of  a  trade  mark,  the  Registrar  shall  send  notice 
in  the  prescribed  manner  to  the  registered  proprietor  at  his 
registered  address  of  the  date  at  which  the  existing  registration 


116  BRITISH  GUIANA 

will  expire  and  the  conditions  as  to  payment  of  fees  and  other- 
wise upon  which  a  renewal  of  such  registration  may  be  obtained, 
and  if  at  the  expiration  of  the  time  prescribed  in  that  behalf, 
such  conditions  have  not  been  duly  complied  with,  the  Registrar 
may  remove  such  trade  mark  from  the  register,  subject  to  such 
conditions  (if  any)  as  to  its  restoration  to  the  register  as  may 
be  prescribed. 

Status  of  Unrenewed  Trade  Marks 

30.  Where  a  trade  mark  has  been  removed  from  the  regis- 
ter for  non-payment  of  the  fee  for  renewal,  such  trade  mark 
shall,  nevertheless,  for  the  purpose  of  any  application  for  regis- 
tration during  one  year  next  after  the  date  of  such  removal,  be 
deemed  to  be  a  trade  mark  which  is  already  registered,  unless 
it  is  shown  to  the  satisfaction  of  the  Registrar  that  there  has 
been  no  bona  fide  trade  user  of  such  mark  during  the  two  years 
immediately  preceding  such  removal. 

CORRECTION  AND  RECTIFICATION  OF  THE  REGISTER 
Correction  of  Register 

31.  The  Registrar  may,  on  request  made  in  writing  by  the 
registered  proprietor  or  by  some  person  entitled  by  law  to  act 
in  his  name: 

(1)  correct  any  error  in  the  name  or  address  of  the  regis- 
tered proprietor  of  a  trade  mark;  or 

(2)  enter  any  change  in  the  name  or  address  of  the  person 
who  is  registered  as  proprietor  of  a  trade  mark ;  or 

(3)  cancel  the  entry  of  a  trade  mark  on  the  register;  or 

(4)  strike  out  any  goods  or  classes  of  goods  from  those  for 
which  a  trade  mark  is  registered;  or 

(5)  enter  a  disclaimer  or  memorandum  relating  to  a  trade 
mark  which  does  not  in  any  way  extend  the  rights  given  by  the 
existing  registration  of  such  trade  mark. 

Any  decision  of  the  Registrar  under  this  section  shall  be 
subject  to  appeal  to  the  Court. 

Registration  of  Assignments 

32.  Subject  to  the  provisions  of  this  Ordinance,  where  a 
person  becomes  entitled  to  a  registered  trade  mark  by  assign- 
ment, transmission,  or  other  operation  of  law,  the  Registrar 
shall,  on  request  made  in  the  prescribed  manner  and  on  proof 
of  title  to  his  satisfaction,  cause  the  name  and  address  of  such 
person  to  be  entered  on  the  register  as  proprietor  of  the  trade 
mark. 

Any  decision  of  the  Registrar  under  this  section  shall  be 
subject  to  appeal  to  the  Court. 


BRITISH  GUIANA  117 

Alteration  of  Registered  Trade  Mark 

33.  The  registered  proprietor  of  any  trade  mark  may  ap- 
ply in  writing  to  the  Registrar  for  leave  to  add  to  or  alter  such 
trade  mark  in  any  manner  not  substantially  affecting  the  iden- 
tity of  the  same,  and  the  Registrar  may  refuse  such  leave  or 
may  grant  the  same  on  such  terms  as  he  may  think  fit,  but  any 
such  refusal  or  conditional  permission  shall  be  subject  to  appeal 
to  the  Court.    If  leave  be  granted,  the  trade  mark  as  altered 
shall  be  advertised  in  the  prescribed  manner. 

Rectification  of  Register 

34.  Subject  to  the  provisions  of  this  Ordinance — 

(1)  the  Court  may,  on  the  application  in  writing  of  any 
person  aggrieved  by  the  non-insertion  in  or  omission  from  the 
register  of  any  entry,  or  by  any  entry  made  in  the  register 
without  sufficient  cause,  or  by  any  entry  wrongly  remaining  on 
the  register,  or  by  any  error  or  defect  in  any  entry  in  the  regis- 
ter, make  such  order  for  making,  expunging,  or  varying  such 
entry,  as  it  may  think  fit ; 

(2)  the  Court  may  in  any  proceeding  under  this  section 
decide  any  question  that  it  may  be  necessary  or  expedient  to 
decide  in  connection  with  the  rectification  of  the  register; 

(3)  in  case  of  fraud  in  the  registration  or  transmission  of 
a  registered  trade  mark  the  Registrar  may  himself  apply  to  the 
Court  under  the  provisions  of  this  section; 

(4)  any  order  of  the  Court  rectifying  the  register  shall 
direct  that  the  notice  of  the  rectification  shall  be  served  upon 
the  Registrar  in  the  prescribed  manner,  who  shall  upon  receipt 
of  such  notice  rectify  the  register  accordingly. 

Non-user  of  Trade  Mark 

35.  A  registered  trade  mark  may,  on  the  application  to 
the  Court  of  any  person  aggrieved,  be  taken  off  the  register  in 
respect  of  any  of  the  goods  for  which  it  is  registered,  on  the 
ground  that  it  was  registered  by  the  proprietor  or  a  predecessor 
in  title  without  any  bona  fide  intention  to  use  the  same  in  con- 
nection with  such  goods,  and  that  there  has  in  fact  been  no 
bona  fide  user  of  the  same  in  connection  therewith,  or  on  the 
ground  that  there  has  been  no  bona  fide  user  of  such  trade  mark 
in  connection  with  such  goods  during  the  five  years  immediately 
preceding  the  application,  unless  in  either  case  such  non-user 
is  shown  to  be  due  to  special  circumstances  in  the  trade,  and 
not  to  any  intention  not  to  use  or  to  abandon  such  trade  mark 
in  respect  of  such  goods. 

EFFECT  OF  REGISTBATION 
Powers  of  Registered  Proprietor 

36.  Subject  to  the  provisions  of  this  Ordinance — 


118  BRITISH  GUIANA 

(1)  the  persons  for  the  time  being  entered  in  the  register 
as  proprietor  of  a  trade  mark  shall,  subject  to  any  rights  ap- 
pearing from  such  register  to  be  vested  in  any  other  person, 
have  power  to  assign  the  same,  and  to  give  effectual  receipts 
for  any  consideration  for  such  assignment; 

(2)  any  equities  in  respect  of  a  trade  mark  may  be  en- 
forced in  like  manner  as  in  respect  of  any  other  property. 

Rights  of  Proprietor  of  Trade  Mark 

37.  Subject  to  the  provisions  of  section  thirty-nine  and  to 
any  limitations  and  conditions  entered  upon  the  register,  the 
registration  of  a  person  as  proprietor  of  a  trade  mark  shall,  if 
valid,  give  to  such  person  the  exclusive  right  to  the  use  of  such 
trade  mark  upon  or  in  connection  with  the  goods  in  respect  of 
which  it  is  registered :  Provided  always  that  where  two  or  more 
persons  are  registered  proprietors  of  the  same  (or  substan- 
tially the  same}  trade  mark  in  respect  of  the  same  goods,  no 
rights  of  exclusive  user  of  such  trade  mark  shall,  except  so  far 
as  their  respective  rights  shall  have  been  denned  by  the  Court, 
be  acquired  by  any  one  of  such  persons  as  against  any  other  by. 
the  registration  thereof,  but  each  of  such  persons  shall  other- 
wise have  the  same  rights  as  if  he  were  the  sole  registered  pro- 
prietor thereof. 

Registration  to  be  Prima  Facie  Evidence  of  Validity 

38.  In  all  legal  proceedings  relating  to  a  registered  trade 
mark  (including  applications  under  section  thirty-four),  the 
fact  that  a  person  is  registered  as  proprietor  of  such  trade 
mark  shall  be  prima  facie  evidence  of  the  validity  of  the  original 
registration  of  such  trade  mark  and  of  all  subsequent  assign- 
ments and  transmissions  of  the  same. 

Registration  to  be  Conclusive  after  Seven  Tears 

39.  In  all  legal  proceedings  relating  to  a  registered  trade 
mark   (including  applications  under  section  thirty-four),  the 
original  registration  of  such  trade  mark  shall  after  the  expira- 
tion of  seven  years  from  the  date  of  such  original  registration 
(or  seven  years  from  the  passing  of  this  Ordinance,  whichever 
shall  last  happen)  be  taken  to  be  valid  in  all  respects  unless 
such  original  registration  was  obtained  by  fraud,  or  unless  the 
trade  mark  offends  against  the  provisions  of  section  ten  hereof. 

Provided  that  nothing  in  this  Ordinance  shall  entitle  the 
proprietor  of  a  registered  trade  mark  to  interfere  with  or  re- 
strain the  user  by  any  person  of  a  similar  trade  mark  upon  or 
in  connection  with  goods  upon  or  in  connection  with  which  such 
person  has,  by  himself  or  his  predecessors  in  business,  continu- 
ously used  such  trade  mark  from  a  date  anterior  to  the  user  of 


BEITISH  GUIANA  119 

the  first  mentioned  trade  mark  by  the  proprietor  thereof  or  his 
predecessors  in  business  or  to  object  (on  such  user  being  proved) 
to  such  person  being:  put  upon  the  register  for  such  similar 
trade  mark  in  respect  of  such  goods  under  the  provisions  of 
section  twenty  of  this  Ordinance. 

Unregistered  Trade  Mark 

40.  No  person  shall  be  entitled  to  institute  any  proceedings 
to  recover  damages  for  the  infringement  of  a  trade  mark  not 
registered  in  the  Colony. 

Infringement 

41.  In  an  action  for  the  infringement  of  a  trade  mark  the 
Court  trying  the  question  of  infringement  shall  admit  evidence 
of  the  usages  of  the  trade  in  respect  to  the  get-up  of  the  gooods 
for  which  the  trade  mark  is  registered,  and  of  any  trade  marks 
or  get-up  legitimately  used  in  connection  with  such  goods  by 
other  persons. 

User  of  Name,  Address,  or  Description  of  Goods 

42.  No  registration  under  this  Ordinance  shall  interfere 
with  any  bona  fide  use  by  a  person  of  his  own  name  or  place 
of  business,  or  that  of  any  of  his  predecessors  in  business,  or 
the  use  by  any  person  of  any  bona  fide  description  of  the  charac- 
ter or  quality  of  his  goods. 

"Passing  Off"  Action 

43.  Nothing  in  this  Ordinance  contained  shall  be  deemed 
to  affect  rights  of  action  against  any  person  for  passing  off 
goods  as  those  of  another  person  or  the  remedies  in  respect 
thereof. 

LEGAL  PROCEEDINGS 
Certificate  of  Validity 

44.  In  any  legal  proceeding  in  which  the  validity  of  the 
registration  of  a  registered  trade  mark  comes  into  question 
and  is  decided  in  favour  of  the  proprietor  of  such  trade  mark, 
the  Court  may  certify  the  same,  and  if  it  so  certifies,  then  in 
any  subsequent  legal  proceeding  in  which  such  validity  comes 
into  question  the  proprietor  of  the  said  trade  mark  on  obtain- 
ing a  final  order  of  judgment  in  his  favour  shall  have  his  full 
costs,  charges,  and  expenses  as  between  solicitor  and  client  un- 
less in  such  subsequent  proceeding  the  Court  certifies  that  he 
ought  not  to  have  the  same. 

Registrar  to  Have  Notice  of  Proceeding  for  Rectification 

45.  In  any  legal  proceeding  in  which  the  relief  sought  in- 
cludes alteration  or  rectification  of  the  register,  the  Registrar 
shall  have  the  right  to  appear  and  be  heard,  and  shall  appear 
if  so  directed  by  the  Court.    Unless  otherwise  directed  by  the 


120  BRITISH  GUIANA 

Court,  the  Registrar  in  lieu  of  appearing  and  being  heard  may 
submit  to  the  Court  a  statement  in  writing,  signed  by  him,  giv- 
ing particulars  of  the  proceedings  before  him  in  relation  to  the 
matter  in  issue  or  of  the  grounds  of  any  decision  given  by  him 
affecting  the  same  or  of  the  practice  of  the  office  in  like  cases, 
or  of  such  other  matters  relevant  to  the  issues,  and  within  his 
knowledge  as  such  Registrar,  as  he  shall  think  fit,  and  "such 
statement  shall  be  deemed  to  form  part  of  the  evidence  in  the 
proceeding. 

COSTS 
Costs  of  Proceedings  Before  Court 

46.  In  all  proceedings  before  the  Court  under  this  Ordi- 
nance the  costs  of  the  Registrar  shall  be  in  the  discretion  of  the 
Court,  but  the  Registrar  shall  not  be  ordered  to  pay  the  costs 
of  any  other  of  the  parties. 

EVIDENCE 
Mode  of  Giving  Evidence 

47.  In  any  proceedings  under  this  Ordinance  before  the 
Registrar,  the  evidence  shall  be  given  by  statutory  declaration 
in  the  absence  of  directions  to  the  contrary,  but  in  any  case  in 
which  he  shall  think  it  right  so  to  do,  the  Registrar  may  (with  the 
consent  of  the  parties)  take  evidence  viva  voce  in  lieu  of  or  in 
addition  to  evidence  by  declaration.    Any  such  statutory  decla- 
ration may  in  the  case  of  appeal  be  used  before  the  Court  in 
lieu  of  evidence  by  affidavit,  but  if  so  used  shall  have  all  the 
incidents  and  consequences  of  evidence  by  affidavit. 

In  case  any  part  of  the  evidence  is  taken  viva  voce  the 
Registrar  shall  in  respect  of  requiring  the  attendance  of  wit- 
nesses and  taking  evidence  on  oath  be  in  the  same  position  in 
all  respects  as  an  official  referee  of  the  Supreme  Court  in 
England. 

Sealed  Copies  to  be  Evidence 

48.  Printed  or  written  copies  or  extracts  of  or  from  the 
register,  purporting  to  be  certified  by  the  Register  under  his 
seal,  shall  be  admitted  in  evidence  in  all  Courts  and  in  all  pro- 
ceedings without  further  proof  or  production  of  the  originals. 

Certificate  of  Registrar  to  be  Evidence 

49.  A  certificate  purporting  to  be  under  the  hand  of  the 
Registrar  as  to  any  entry,  matter,  or  thing,  which  he  is  author- 
ised by  this  Ordinance  to  make  or  do,  shall  be  prima  facie  evi- 
dence of  the  entry  having  been  made,  and  of  the  contents  thereof, 
and  of  the  matter  or  thing  having  been  done  or  not  done. 

POWERS  AND  DUTIES  OF  REGISTRAR  OF  TRADE  MARKS 
Exercise  of  Discretionary  Power  by  Registrar 

50.  Where  any  discretionary  or  other  power  is  given  to 


BRITISH  GUIANA  121 

the  Registrar  by  this  Ordinance  or  by  any  Rules  made  there- 
under, he  shall  not  exercise  that  power  adversely  to  the  appli- 
cant for  registration  or  the  registered  proprietor  of  the  trade 
mark  in  question  without  (if  duly  required  so  to  do  within  the 
prescribed  time)  giving  such  applicant  or  registered  proprietor 
an  opportunity  of  being  heard. 

Recognition  of  Agents 

51.  When  by  this  Ordinance  any  act  has  to  be  done  by  or 
to  any  person  in  connection  with  a  trade  mark  or  proposed 
trade  mark  or  any  procedure  relating  thereto,  such  act  may, 
under  and  in  accordance  with  rules  made  under  this  Ordinance, 
be  done  by  or  to  an  agent  of  such  party  duly  authorized  in  the 
prescribed  manner. 

RULES 
Power  of  Governor-in-Council  to  Make  Rules 

52.  Subject  to  the  provisions  of  this  Ordinance  the  Gover- 
nor-in-Council may  make  such  rules,  prescribe  such  forms,  and 
generally  do  such  things  as  he  thinks  expedient — 

(a)  for  regulating  the  practice  under  this  Ordinance; 

(b)  for  classifying  goods  for  the  purposes  of  registration 
of  trade  marks; 

(c)  for  making  or  requiring  duplicates  of  trade  marks  and 
other  documents ; 

(d)  for  securing  and  regulating  the  publishing  and  selling 
or  distributing,  in  such  manner  as  the   Governor-in-Council 
thinks  fit,  of  copies  of  trade  marks  and  other  documents  ; 

(e)  generally,  for  regulating  the  business  of  the  office  in 
relation  to  trade  marks  and  all  things  by  this  Ordinance  placed 
under  the  direction  or  control  of  the  Registrar. 

FEES 

53.  There  shall  be  paid  in  respect  of  applications  and 
registration  and  other  matters  under  this  Ordinance  such  fees 
as  may  be  prescribed  and  notified  by  the  Governor-in-Council. 

SPECIAL  TRADE  MARKS 
Standardization  Trade  Marks 

54.  Where  any  association  or  person  undertakes  the  exam- 
ination of  any  goods  in  respect  of  origin,  material,  mode  of 
manufacture,   quality,  accuracy,   or   other  characteristic,   and 
certifies  the  result  of  such  examination  by  mark  used  upon  or 
in  connection  with  such  goods,  the  Governor-in-Council  may,  if 
he  shall  judge  it  to  be  to  the  public  advantage,  permit  such 
association  or  person  to  register  such  mark  as  a  trade  mark  in 
respect  of  such  goods,  whether  or  not  such  association  or  person 
be  a  trading  association  or  trader  or  possessed  of  a  goodwill  in 


122  BRITISH  GUIANA 

connection  with  such  examination  and  certifying.  When  so  reg- 
istered such  trade  mark  shall  be  deemed  in  all  respects  to  be  a 
registered  trade  mark,  and  such  association  or  person  to  be  the 
proprietor  thereof,  save  that  such  trade  mark  shall  be  trans- 
missible or  assignable  only  by  permission  of  the  Governor-in- 
Council. 

OFFENCES 
Falsification  of  Entries  in  Register 

55.  If  any  person  makes  or  causes  to  be  made  a  false  entry 
in  the  register  kept  under  this  Ordinance  or  a  writing  falsely 
purporting  to  be  a  copy  of  any  entry  in  any  such  register,  or 
produces  or  tenders  or  causes  to  be  produced  or  tendered  in 
evidence  any  such  entry  or  writing,  knowing  the  same  to  be 
false,  he  shall  be  guilty  of  a  misdemeanor. 

Penalty  on  Falsely  Representing  a  Trade  Mark  as  Registered 

56.  (1)  Any  person  who  represents  a  trade  mark  as  regis- 
tered in  British  Guiana  which  is  not  so  registered  shall  be  liable 
for  every  offence,  on  summary  conviction,  to  a  fine  not  exceed- 
ing fifty  dollars. 

(2)  A  person  shall  be  deemed,  for  the  purposes  of  this  Or- 
dinance, to  represent  that  a  trade  mark  is  registered  in  British 
Guiana  if  he  uses  in  connection  with  the  trade  mark  the  words 
"registered  in  British  Guiana,"  or  any  words  expressing  or 
implying  that  registration  has  been  obtained  in  British  Guiana 
for  the  trade  mark. 

ROYAL  ARMS 
Unauthorised  Assumption  of  Royal  Arms 

57.  If  any  person,  without  the  authority  of  His  Majesty, 
uses  in  connection  with  any  trade,  business,  calling,  or  profes- 
sion, the  Royal  Arms  (or  arms  so  closely  resembling  the  same 
as  to  be  calculated  to  deceive)  in  such  manner  as  to  be  calcu- 
lated to  lead  to  the  belief  that  he  is  duly  authorized  so  to  use 
the  Royal  Arms,  or  if  any  person,  without  the  authority  of  His 
Majesty  or  a  member  of  the  Royal  Family,  uses  in  connection 
with  any  trade,  business,  calling,  or  profession,  any  device,  em- 
blem, or  title  in  such  manner  as  to  be  calculated  to  lead  to  the 
belief  that  he  is  employed  by  or  supplies  to  His  Majesty  or  to 
such  member  of  the  Royal  Family,  he  may,  at  the  suit  of  any 
person  who  is  authorised  to  use  such  arms  or  such  device,  em- 
blem, or  title,  or  who  is  authorised  by  the  Governor  to  take  pro- 
ceedings in  that  behalf,  be  restrained  by  injunction  from  con- 
tinuing so  to  use  the  same :  Provided  that  nothing  in  this  section 
shall  be  construed  as  affecting  the  right,  if  any,  of  the  proprie- 
tor of  a  trade  mark  containing  any  such  arms,  device,  emblem, 


BRITISH  GUIANA  123 

or  title  to  continue  to  use  such  trade  mark. 

Amendment  of  Sec.  2,  Ord.  2  of  1888 

58.  Section  two  of  the  Merchandise  Marks  Ordinance, 
1888,*  is  hereby  amended  as  follows : 

"The  definition  of  'Trade  Mark'  shall  be  read  and  con- 
strued as  if  the  definition  of  Trade  Mark  in  this  Ordinance  were 
inserted  in  lieu  thereof." 

Repeal  No.  16  of  1912 

59.  The  Merchandise  Marks  Ordinance,  1888,  Amendment 
Ordinance,  1912,  is  hereby  repealed. 

*Substantially  the  same  as  Great  Britain :   Merchandise  Marks  Act,  which  see. 


BRITISH  HONDURAS 

This  colony  has  no  trade  mark  law. 

Merchandise  Marks  Act  No.  3,  of  1888,  substantially  like 
the  British,  which  see. 


BRITISH  NORTH  BORNEO 

PEOCLAMATION  NO.  VI  OF  [NOVEMBER  1,]  1893 

I.  This  Proclamation  may  be  cited  as  the  Merchandize 
Marks  Amendment  Proclamation  of  1893. 

II.  From  and  after  the  passing  of  this  Proclamation  a 
book  shall  be  kept  in  one  of  the  public  offices  or  courts  of  the 
Territory  and  shall  be  called  "The  Register  of  Trade  Marks." 

III.  Any  person  claiming  the  right  to  the  exclusive  use  of 
any  Trade  Mark,  either  solely  or  jointly  with  others,  may  apply 
to  the  Governor  for  leave  to  register  the  same  in  the  "  Register 
of  Trade  Marks. ' ' 

IV.  Every  such  application  must  be  accompanied  by  a 
fac-simile  or  specimen  of  the  " Trade  Mark"  sought  to  be  regis- 
tered, verified  by  affidavit:  and  every  such  affidavit  shall  set 
forth  the  description  and  nature  of  the  goods  upon  which  such 
Trade  Mark  has  hitherto  been,  or  is  intended  to  be  used,  and 
that  the  deponent  is  to  the  best  of  his  belief  entitled  solely  or 
jointly  with  some  person  or  other  persons  therein  named  to  the 
exclusive  use  of  such  Trade  Mark. 

V.  Upon  compliance  with  the  formalities  hereinbefore  pre- 
scribed, it  shall  be  lawful  for  the  Governor,  if  he  shall  in  his 
discretion  think  fit,  to  grant  the  application  and  to  order  the 
registration  of  the  said  Trade  Mark  in  the  register  and  the  filing 
of  all  affidavits  transmitted  therewith  in  manner  aforesaid. 

VI.  Notice  of  the  registration  of  a  Trade  Mark  under  this 
Proclamation  shall  be  published  in  the  Gazette,  and  the  Register 
of  Trade  Marks  shall  be  open  to  public  inspection,  at  all  reason- 
able times,  on  payment  of  such  fee  as  may  be  fixed  in  manner 
hereinafter  mentioned. 

VII.  It  shall  be  lawful  for  the  Governor  from  time  to  time 
to  make  and  vary  rules  or  orders  for  the  better  carrying  out 
of  the  provisions  of  this  Proclamation  and  to  fix  and  vary  a 
scale  of  fees  payable  for  the  registration  of  Trade  Marks,  the 
inspection  of  the  register,  the  filing  of  affidavits,  the  issuing  of 
office  copies  and  other  incidental  matters. 

VIII.  From  and  after  the  registration  of  a  Trade  Mark, 
all  entries  in  the  Register  of  Trade  Marks  and  all  affidavits  filed 
under  this  Proclamation  or  an  office  copy  of  any  such  affidavit, 
or  of  any  such  entry  in  the  register  certified  under  the  hand  of 
any  duly  authorized  Officer  shall  be  admitted  in  all  legal  pro- 
ceedings whatever,  civil  or  criminal,  as  prima  facie  evidence  of 


126  BRITISH  NORTH  BORNEO 

the  truth  and  correctness  of  the  contents  thereof  respectively, 
and  of  the  right  therein  appearing  of  the  deponent  solely 
or  jointly  with  others,  as  the  case  may  be,  to  the  exclusive  use 
of  the  Trade  Mark  therein  referred  to. 

IX.  It  shall  be  lawful  for  the  Governor,  at  any  time  and  on 
such  grounds  as  he  shall  think  sufficient,  to  cancel  the  registra- 
tion of  any  Trade  Mark  under  this  Proclamation. 

X.  This  Proclamation  and  '  *  The  Merchandize  Marks  Proc- 
lamation of  1891"*  shall  be  read  together  and  construed  for  all 
purposes  as  one  Proclamation. 

XI.  The  following  scale  of  fees  to  be  charged  under  this 
Proclamation  shall  remain  in  force  until  it  has  been  varied  or 
amended  by  the  Governor  under  Section  VII. 

Registration  of  Trade  Mark $5.00 

Filing  Affidavit 2.00 

Inspection  of  Register 1.00 

Office  Copy  of  Entry 3.00 

Copy  of  Affidavit  if  not  over  100  words 50 

Copy  of  Affidavit  if  over  100  words,  for 
every  additional  folio  of  100  words  or 
part  thereof 25 

*Substantially  the  same  as  Great  Britain :   Merchandise  Marks  Act,  which  see. 


GENERAL  PROVISIONS 

ARTICLE  I.  Any  distinctive  sign  that  serves  to  distinguish 
products  of  commerce  or  of  industry  shall  constitute  a  trade 
mark  within  the  meaning  of  the  present  law. 

Trade  marks  may  consist  of: 

1)  The  styles  or  firm  names  of  merchants  and  manufac- 
turers ; 

2)  Facsimile  signatures  of  merchants  or  manufacturers, 
as  well  as  their  monograms  in  special  forms ; 

3)  Arbitrary  denominations  not  connected,  in  any  way,  with 
the  nature  of  the  article  to  which  they  are  to  be  applied  as  trade 
mark; 

4)  Emblems,  seals,  vignettes,  figures,  reliefs,  labels,  wrap- 
pers or  containers,  forms  of  products,  of  their  wrappers  or  of 
their  containers,  devices,  borders ; 

5)  Letters  or  numerals  combined  in  a  distinctive  manner; 

6)  The  name  of  an  urban  or  rural  property  belonging  to 
the  person  who  employs  it  as  the  mark  of  his  products,  etc. 

ART.  2.  All  the  inscriptions  that  surround  a  trade  mark 
or  which  are  enclosed  therein,  such  as: 

a)  The  firm  of  a  merchant,  provided  that  said  style  does 
not  itself  form  the  trade  mark ; 

b)  The  number,  the  volume,  the  measure,  the  weight,  or 
the  capacity  of  the  goods ; 

c)  The  place  or  the  country  where  the  goods  are  manu- 
factured or  produced; 

d)  The  manner  in  which  they  are  made  or  produced; 

e)  The  material  of  which  they  are  made  or  produced,  etc., 
shall  constitute  an  integral  part  of  the  trade  mark. 

ART.  3.     Trade  marks  may  be  individual  or  collective. 

ART.  4.  Trade  marks  may  be  printed,  lithographed,  photo- 
graphed, modeled,  engraved,  inlaid,  woven,  pyrographed,  repro- 
duced or  printed  in  any  desired  manner  on  stoppers,  labels, 
containers  and  wrappers,  on  the  articles  themselves,  and  on  their 
partial  or  entire  wrapper. 

ART.  5.  The  employment  of  a  mark  is  not  obligatory  save 
in  a  case  where  the  Minister  of  Commerce  shall  consider  that 
the  interests  of  commerce  and  of  national  industry  require  that 
certain  objects  shall  be  invested  therewith.  In  this  case,  these 


128  BULGARIA 

objects  shall  be,  at  the  instance  of  the  Ministry  of  Commerce 
and  of  Agriculture,  delegated  to  this  effect  by  a  Council  of 
Ministers,  stipulated  by  princely  ukase  (decree). 

ART.  6.  The  employment  of  marks  is  authorized  even  when 
they  shall  not  be  registered,  provided  that,  by  this  fact,  the 
interests  of  proprietors  of  marks  already  deposited  may  not  be 
injured. 

ART.  7.  The  registration  of  a  trade  mark  shall  not  involve 
any  responsibility  as  to  the  State  concerning  the  novelty,  orig- 
inality, and  distinct  features  that  distinguish  it  from  some  pre- 
viously registered  trade  mark.  However,  the  Bureau  of  Indus- 
trial Property  shall  be  bound  to  make  a  preliminary  examina- 
tion of  the  trade  mark  filed  for  registration  and  to  refuse  such 
registration  in  those  cases  provided  for  by  the  present  law. 

CHAPTER  II 

REGISTRATION  OP  MARKS 

ART.  8.  The  registration  of  marks  shall  be  effected  in  a 
special  Bureau  under  the  Minister  of  Commerce,  Section  of 
Commerce  and  of  Industry,  called  "Bureau  of  Industrial 
Property." 

The  personnel  of  this  Bureau  shall  be  named  according  to 
the  needs  by  the  competent  Minister,  and  this  personnel  shall 
be  placed  under  the  control  of  the  Chief  of  the  Section  of  Com- 
merce and  of  Industry. 

ART.  9.  A  trade  mark  shall  be  registered  pursuant  to  an 
application  to  be  forwarded  to  the  Bureau  of  Industrial  Prop- 
erty, written  in  Bulgarian,  and  containing  an  exact  indication 
of  applicant's  name  and  surname,  his  occupation,  and  his  place 
of  residence,  a  clear  and  accurate  description  (in  Bulgarian)  of 
the  trade  mark  with  a  list  of  those  articles  that  are  to  be  dis- 
tinguished by  such  trade  mark. 

ART.  10.  There  must  be  joined  to  this  application:  three 
copies  of  the  trade  mark  to  be  registered,  made  on  strong  and 
good  paper,  a  cliche  for  its  reproduction  which  must  not  exceed 
10  x  8  x  2.2  cm.  and  other  documents  that  may  be  necessary. 

ART.  11.  In  the  Provinces,  the  application,  accompanied 
by  the  necessary  documents,  may  be  forwarded  to  the  Prefect. 
The  latter  shall,  after  having  indicated  the  date  and  the  hour 
of  its  reception,  address  it,  without  delay,  to  the  Ministry  of 
Commerce  and  of  Agriculture. 

ART.  12.  Applications  for  the  registration  of  foreign  trade 
marks  shall  be  addressed  directly  to  the  Ministry  of  Commerce 
and  Agriculture,  Bureau  of  Industrial  Property. 

ART.  13.    Applications  for  registration,  as  well  as  applica- 


BULGAEIA  129 

tions  for  renewal,  shall  be  deposited  personally  by  the  inter- 
ested parties  or  by  their  attorneys. 

ART.  14.  Marks  belonging  to  Bulgarians  or  to  Bulgarian 
subjects  dwelling  abroad,  or  to  foreigners  dwelling  in  Bulgaria, 
shall  be  registered  under  the  same  conditions  as  those  of  natives. 

ART.  15.  Trade  marks  of  foreigners  that  reside  without 
the  Principality  shall  be  registered  under  the  same  conditions 
as  those  of  Bulgarians,  provided  that  commercial  treaties,  or 
else  the  laws  of  the  land  to  which  said  foreigners  belong  or  in 
which  they  have  their  principal  place  of  business,  admit  of 
reciprocity  in  favor  of  Bulgarian  subjects. 

ART.  16.  Apart  from  the  formalities  provided  for  by  the 
present  law,  the  following  requirements  must  also  be  complied 
with  if  the  trade  marks  mentioned  in  the  preceding  article  are 
to  be  registered: 

The  petition  for  registration  must  be  accompanied: 

1)  By  a  certificate  attesting  that  applicant  has  complied 
with  the  conditions  provided  in  the  law  of  the  country  to  which 
he  belongs  for  the  protection  of  the  mark; 

2)  A  declaration  to  the  effect  that  applicant  will  recognize 
the  competency  of  the  courts  of  the  country  in  all  questions 
concerning  the  trade  mark;  applicant  shall  also  appoint  some 
person  residing  in  the  Principality  to  take  charge  of  the  trade 
mark; 

3)  Marks  shall  not  be  protected  to  a  greater  extent  nor  for 
a  longer  period  than  in  the  country  where  they  have  been  orig- 
inally registered. 

ART.  17.  Decision  granting  or  refusing  the  registration  of 
a  mark  shall  not  be  made  by  the  Bureau  less  than  five  days 
nor  more  than  fifteen  days  after  that  on  which  the  application 
has  been  deposited  in  conformity  with  Arts.  11,  12  and  19. 

ART.  18.  If  the  mark  deposited  meets  the  conditions  pro- 
vided for  by  the  present  law,  it  shall  be  registered  ad  hoc,  and 
a  certificate  attesting  this  proceeding  shall  be  delivered  to  the 
interested  party. 

The  certificate  of  registration  shall  be  provided  with  a 
stamp  of  three  levas. 

Registration  shall  be  made  by  class,  according  to  the  nature 
of  the  product.  Each  registration  shall  bear  two  numbers — a 
serial  number  and  another  of  classification. 

Once  the  above  mentioned  certificate  is  delivered,  the  mark, 
accompanied  by  the  necessary  indications,  shall  be  published  in 
a  special  bulletin  forming  a  supplement  to  the  Official  Journal. 

One  of  the  copies  of  the  registered  mark  shall  be  preserved, 
duly  classified,  in  the  Registers  of  the  Bureau  of  Industrial 


130  BULGARIA 

Property;  the  second  copy  shall  be  preserved  in  the  Register 
of  the  Commercial  and  Industrial  Museum,  and  placed  at  the 
disposition  of  the  public;  the  third,  affixed  to  the  certificate  of 
registration,  shall  be  forwarded  to  the  interested  party. 

ART.  19.  At  the  time  of  the  registration,  the  priority  shall 
be  attributed  to  him  that  is  the  first  to  forward  his  application 
to  the  Prefecture  of  the  Department  or  to  the  Bureau  of  In- 
dustrial Property. 

When  two  or  more  applications  are  made  simultaneously, 
whether  at  the  Prefecture  of  the  Department  or  at  the  Bureau 
of  Industrial  Property,  they  shall  follow  the  following  order : 

1)  The  applications  of  Bulgarian  subjects  or  foreigners 
established  in  the  Principality; 

2)  Those  of  Bulgarians  established  abroad; 

3)  Those  of  foreigners  living  in  those  countries  admitting 
reciprocity ; 

4)  Those  of  foreigners  of  other  countries ; 

5)  However,  if,  in  any  of  the  cases  above  enumerated,  two 
or  more  applications  shall  have  been  presented  simultaneously, 
there  shall  be  considered  as  having  been  first  deposited  that 
which  shall  have  required  the  longest  time  to  arrive. 

ART.  20.  A  tax  of  50  levas  gold  shall  be  paid  for  each  first 
deposit  and  40  levas  gold  for  each  renewal. 

Apart  from  this  tax  the  applications  must  be  provided  with 
a  stamp  of  50  stotinki,  and  the  annexes,  with  that  provided  for 
by  the  provisions  of  the  Stamp  Law. 

The  registration  taxes  shall  be  paid  to  the  Office  of  the 
Public  Cashier,  whose  receipt  shall  be  joined  to  the  application. 

In  case  of  the  refusal  of  registration,  the  tax  paid  shall  be 
refunded  to  the  party,  and  mention  thereof  shall  be  made  on 
the  receipt. 

Taxes  relative  to  a  mark  that,  for  one  reason  or  another, 
shall  be  in  the  course  of  time  suppressed,  shall  not  be  refunded. 

ART.  21.  The  intermediaries  charged  with  requesting  the 
registration  of  marks  may  only  be  persons  enjoying,  in  the 
Principality,  civil  and  political  rights.  The  other  conditions 
required  of  these  intermediaries  will  be  determined  by  the  regu- 
lation relative  to  the  execution  of  this  law. 

CHAPTER  III 

REFUSAL  OF  REGISTRATION 

ART.  22.  The  Bureau  of  Industrial  Property  shall  refuse 
the  registration  of  a  trade  mark  in  the  following  cases : 

1)  If  the  information  required  by  the  law  does  not  appear 
in  the  application,  or  if  the  necessary  documents  and  annexes 


BULGARIA  131 

are  not  included  therewith; 

2)  If  the  Bureau  finds  that  the  three  copies  of  the  trade 
mark  are  not  identical; 

3)  If  the  trade  mark  consists,  entirely  or  partially,  of  signs 
contrary  to  good  morals,  to  religion,  or  to  public  order ; 

4)  If  the  trade  mark  consists  of  photographs  or  designs 
representing  the  effigy  of  the  Sovereign  or  of  members  of  his 
family,  those  of  foreign  Sovereigns  or  of  their  families,  of  the 
National  Arms,  or  even  if  it  contains,  as  constitutive  elements, 
such  designs  or  photographs,  save  in  those  cases  where  it  can 
be  proved  that  applicant  has  obtained  permission  to  use  certain 
escutcheons  as  annexes  of  his  trade  mark; 

5)  If  the  mark  consists  in  photographs  or  drawings  repre- 
senting men  of  State,  without  their  assent,  or  that  of  their  legal 
representatives,  unless  ten  years  have  gone  by  since  the  day 
of  their  decease ; 

6)  If  the  trade  mark  contains  the  emblem  of  the  Red  Cross, 
its  imitation,  or  the  words  "Tcherven  Krest"   (Red  Cross) 
without  the  permission  of  this  Society ; 

7)  If  it  consists  of  or  if  it  contains  firms  or  names  of  private 
persons  or  of  societies  that  the  applicant  has  no  right  to  use ; 

8)  If  it  contains  or  consists  of  personal  decorations  that 
have  nothing  in  common  with  the  business  for  the  products  of 
which  the  mark  is  intended; 

9)  If  the  mark  consists  in  or  contains  reproductions  of 
medals,  or  if  it  refers  to  diplomas  and  honorable  mentions  that 
the  depositor  does  not  possess ; 

10)  If  the  mark  contains  reproductions  of  medals  and  other 
decorations  connected  with  applicant's  business,  and  if  they 
are  so  arranged  as  to  overshadow  the  trade  mark  itself ; 

11)  If  the  trade  mark  consists  of  or  if  it  contains  inscrip- 
tions that  may  give  rise  to  the  belief  that  the  goods  to  which  it 
is  to  be  applied  are  of  domestic  origin ; 

12)  Finally,  if  the  mark  is  an  infringement  of  a  mark  al- 
ready registered,  or  the  registration  of  which  has  already  been 
applied  for  by  a  duly  filed  application,  or  if  it  is  an  imitation 
of  a  previously  registered  trade  mark. 

ART.  23.  Native  manufacturers  or  merchants  that  possess 
the  first  prize  or  the  gold  medal  of  any  Universal  Exposition 
are  authorized  to  affix  to  their  marks  the  State  Arms,  but  in 
such  a  way  that  they  shall  not  overshadow  the  mark  itself. 

ART.  24.  The  refusal  to  register  a  mark  shall  be  communi- 
cated in  writing  to  the  interested  party  within  the  delay  foreseen 
by  Art.  17. 

ART.  25.    If  the  interested  party  is  dissatisfied  with  the 


132  BULGARIA 

decision  of  the  Bureau,  he  may  enter  appeal,  within  the  delay 
of  one  month  from  the  day  when  the  communication  has  been 
made  to  him,  before  the  Tribunal  of  First  Instance  of  the  district 
where  the  demand  has  been  deposited,  which  must  decide  defi- 
nitely on  the  objection  within  a  delay  of  one  month. 

After  the  expiration  of  the  delay  for  appeal,  the  decision 
shall  be  considered  as  definitive,  and  shall  become  effective. 

ART.  26.  The  Tribunal  shall,  before  the  examination  of  the 
question,  inquire  concerning  the  reasons  that  have  led  the  Bu- 
reau to  refuse  the  registration. 

The  Bureau  shall  give  in  writing,  or  orally,  its  explanations 
to  the  Tribunal. 

ART.  27.  The  decision  of  the  Bureau  relative  to  the  refusal 
to  register  a  mark  may  only  be  tried  before  the  courts. 

CHAPTER  IV 

RIGHTS  OF  OWNERSHIP  OF  TRADE  MARKS 

ART.  28.  After  having  been  duly  registered,  the  trade 
mark  shall  become  the  exclusive  property  of  the  one  that  has 
obtained  the  registration,  provided  that  its  ownership  is  not 
contested  before  the  competent  court  within  one  year  after  the 
date  of  its  registration. 

ART.  29.  The  right  of  ownership  to  a  trade  mark  shall  be 
established  by  the  certificate  of  registration  that  the  Bureau 
of  Industrial  Property  shall  deliver  to  those  entitled  to  it,  ac- 
cording to  Art.  18. 

ART.  30.  The  right  of  ownership  to  a  trade  mark  is  con- 
nected with  the  business  for  which  it  has  been  registered.  The 
discontinuance  of  the  enterprise  shall  imply  the  extinguishing 
of  all  rights  to  the  mark. 

ART.  31.  The  right  to  the  exclusive  use  of  a  mark  derived 
from  the  right  of  ownership  to  said  mark  shall  refer  only  to 
the  article  for  which  it  has  been  particularly  registered. 

ART.  32.  The  right  to  the  exclusive  use  of  a  mark  shall 
endure  for  a  term  of  ten  years. 

At  the  expiration  of  this  term,  the  registration  may  be 
renewed  for  periods  of  ten  years. 

The  renewal  of  the  registration  shall  be  effected  in  virtue 
of  a  written  application  filed  in  the  Bureau  during  the  course 
of  the  last  year. 

ART.  33.  Only  the  owner  of  a  registered  mark  has 
the  right  to  insert  near  its  border  the  words  ' '  Registered  Trade 
Mark"  or  its  abbreviation,  in  small  letters,  so  as  not  to  over- 
shadow the  mark  itself. 

ART.  34.    The  marks  of  products  of  establishments  of  the 


BULGARIA  133 

State  shall  always  be  considered  as  registered. 

ART.  35.  The  right  of  ownership  to  a  mark  may  be  as- 
signed, at  the  same  time  as  the  enterprise  for  whose  goods  it 
serves  as  a  distinctive  sign,  unless  it  has  been  agreed  otherwise 
between  the  parties. 

ART.  36.  In  order  that  such  assignment  may  be  valid  as 
against  third  parties,  it  must  be  duly  recorded  in  the  Registers 
of  the  Bureau  of  Industrial  Property. 

ART.  37.  Every  assignment  shall  be  effected  in  the  Bureau 
of  Industrial  Property  upon  payment  of  a  fee  amounting  to 
30  levas  gold.  The  assignment  shall  be  exempt  from  said  fee 
if  the  business  and  the  mark  pass  to  the  wife  or  the  minor 
children  of  the  first  owner  of  said  mark. 

ART.  38.  For  each  transfer  made  in  the  Register,  the  Bu- 
reau shall  deliver  to  the  party  interested  the  certificate  referring 
thereto. 

ART.  39.  The  registration  of  a  mark  shall  be  cancelled 
from  the  Registers  of  the  Bureau : 

1)  If  the  right  of  ownership  of  such  trade  mark  is  contested 
with  success  before  a  competent  court  (Art.  28) ; 

2)  If  within  three  months  after  the  date  of  an  assignment 
the  interested  party  has  not  notified  the  Bureau,  or  if,  having 
notified  it,  the  tax  provided  for  by  Art.  37  has  not  been  paid ; 

3)  If  the  registration  of  a  mark  is  not  renewed  within  three 
morths  after  the  expiration  of  each  term  of  ten  years; 

4)  If  the  fact  is  established  that  its  owner  has  ceased  to 
use  it  for  the  purpose  for  which  it  has  been  registered,  for  a 
period  of  at  least  three  years. 

ART.  40.  Marks  whose  registration  is  cancelled  shall  be 
declared  of  public  domain. 

ART.  41.  At  the  end  of  the  tenth  year  the  Bureau  shall 
notify  the  owner  of  a  mark  of  the  fact  that  the  term  of  regis- 
tration is  about  to  expire. 

However,  the  failure  to  notify  the  owner  of  a  mark  that 
the  term  for  which  the  latter  has  been  registered  will  soon  ex- 
pire shall  constitute  no  reason  that  might  be  offered  as  excuse 
for  the  non-renewal  of  the  registration. 

ART.  42.  A  list  of  marks  cancelled  and  of  those  that  have 
been  declared  of  public  domain  during  the  course  of  the  pre- 
ceding month  shall  be  published  each  month  in  the  Bulletin 
with  indication  of  the  reasons. 

CHAPTER  V 

OFFENCES  AND  PENALTIES 
ART.  43.    There  shall  be  considered  as  guilty  of  contra- 


134  BULGARIA 

vention  and  shall  be  liable  to  the  penalties  provided  by  this  law 
— except  where  it  is  proved  that  he  has  acted  without  bad  faith — 
whoever : 

a)  Imitates  a  mark  of  another; 

b)  Uses  a  mark  registered  by  another; 

c)  Employs  an  imitation  of  a  mark  previously  registered; 

d)  Prepares  stamps,  cliches,  machines,  and  other  instru- 
ments specially  intended  for  the  imitation  or  counterfeiting  of 
another  mark; 

e)  Places  on  his  goods  false  commercial  inscriptions; 

f)  Employs  the  indication  " Registered  Trade  Mark"  or  its 
abbreviation  as  a  mark  or  as  its  annex ; 

g)  Has  at  his  disposal  stamps,  cliches,  machines  and  other 
instruments  intended  for  counterfeiting  or  imitating  another 
mark; 

h)  Employs  as  a  mark  or  puts  on  the  papers  of  his  estab- 
lishment without  having  the  right,  the  Arms  of  the  Principality, 
those  of  the  Princely  House,  or  any  imitation  whatsoever  of 
those  Arms  or  the  decorations  of  the  State  and  their  imitation, 
the  portraits  of  the  Sovereign  or  of  members  of  his  family ; 

i)  Employs,  without  having  authority,  the  emblem  of  the 
"Red  Cross,"  its  imitation,  or  the  denomination  "Tcherven 
Krest"  (Red  Cross),  or  the  portraits  of  men  of  state  or  public 
men; 

k)  Allows  to  figure  upon  his  goods,  upon  the  wrappers,  or 
upon  the  containers,  medals,  diplomas,  honorable  mentions,  that 
he  does  not  possess,  or  their  imitation,  or  which,  if  he  does 
possess  them,  represents  them  in  colors  other  than  their  real 
colors ; 

1)  Employs,  in  general,  any  kind  of  inscription  or  denom- 
ination that  may  wrongly  give  rise  to  the  belief  that  the  goods 
are  of  domestic  origin. 

ART.  44.  He  shall  be  considered  also  guilty  of  infraction 
of  the  present  law  that  shall  sell,  exhibit  or  possess  with  intent 
to  sell,  or  for  any  commercial  or  industrial  purpose  whatso- 
ever, goods  or  objects  bearing  one  of  the  inscriptions  or  in- 
signia enumerated  in  paragraphs  b,  c,  e,  f,  h,  i,  k,  1  of  the  pre- 
ceding article,  unless  he  proves : 

a)  That,  notwithstanding  all  the  steps  that  he  has  taken 
in  order  to  avoid  any  contravention  of  the  law,  it  was  impos- 
sible for  him  to  doubt,  at  the  time  of  the  infringement,  the 
authenticity  of  the  mark  used  or  of  the  commercial  inscription 
appropriated ; 

b)  That,  upon  request  made  by  the  party  damaged  or  in 
his  name,  he  (the  infractor)  has  furnished  all  the  information 


BULGARIA  135 

that  it  has  been  possible  for  him  to  furnish  concerning  the  per- 
son that  furnished  him  the  goods  or  the  objects  in  question ; 

c)  That  he  has  acted  without  culpable  intention. 

ART.  45.  Persons  guilty  of  the  offences  enumerated  in 
Arts.  43  and  44  of  the  present  law  shall  be  punishable  by  a  fine 
of  from  500  to  4,000  levas,  or  by  imprisonment  of  from  three 
months  to  one  year,  to  which  a  fine  of  3,000  levas  may  also  be 
added.  Besides  the  penalties  provided  for  in  the  preceding 
provision,  the  injured  party  may  also  demand  from  the  of- 
fender indemnity  for  the  damages  and  losses  sustained.  Upon 
request  of  the  injured  party,  the  delinquent  may  be  condemned 
to  the  publication  of  the  judgment,  at  his  expense,  in  the  Official 
Journal  and  in  one  of  the  local  papers  of  greatest  circulation. 

ART.  46.  In  every  case  the  Court  may  order  the  confisca- 
tion of  any  article,  merchandise,  or  instrument,  and,  in  general, 
of  whatever  may  have  assisted  in  accomplishing  the  offence. 

ART.  47.  The  Tribunal  that  has  condemned  anyone  by 
virtue  of  the  present  law  may  order  the  destruction  of  objects 
confiscated  or  their  sale  to  the  profit  of  a  benevolent  institution. 

Marks  or  inscriptions  that  have  occasioned  the  confiscation 
of  objects  shall  be  destroyed  in  the  way  that  shall  have  been 
thought  proper  at  the  moment  at  which  there  has  been  decreed 
the  sale  of  the  objects  on  which  or  on  the  packages  or  recep- 
tacles to  which  they  have  been  affixed. 

ART.  48.  Under  the  present  law  all  suits  in  matters  of 
infringement  shall  be  tried  in  the  Departmental  Tribunals,  as 
of  first  instance,  pursuance  to  the  rules  of  summary  procedure. 

ART.  49.  Under  the  present  law  action  for  infringement 
shall  be  instituted  in  pursuance  of  a  petition  made  by  the  in- 
terested party.  However,  in  case  of  the  infringements  enu- 
merated in  paragraph  d,  e,  g,  k,  1,  of  Art.  43,  and  of  those  in- 
fringements named  in  the  same  paragraphs  that  appear  again 
in  Art.  44,  actions  shall  be  instituted  by  the  State. 

The  written  minutes  prepared  in  such  cases  by  the  authori- 
ties shall  be  immediately  forwarded  to  the  competent  courts, 
which  shall,  first  of  all,  take  the  measures  necessary  to  confis- 
cate those  articles  that  have  been  the  cause  of  the  infringement. 

ART.  50.  In  case  of  a  repeated  offence  the  penalty  shall 
be  doubled.  If  the  crime  is  committed  within  a  period  of  five 
years  from  the  date  of  the  first  sentence,  it  shall  be  considered 
as  constituting  a  repeated  offence. 

ART.  51.  There  shall  not  be  prosecuted  for  infringing  the 
present  law  salaried  employees,  servants  and  others  that,  in 
committing  the  infringement,  have  acted  for  the  account  of  their 
masters  established  in  the  Principality. 


136  BULGARIA 

ART.  52.  The  Customs  Administration  shall  forbid  the  im- 
portation of  goods  bearing  original  or  imitated  marks  of  Bul- 
garian merchants  or  manufacturers  or  false  commercial  in- 
scriptions. 

Goods  marked  with  the  marks  of  merchants  of  this  country 
may  be  admitted  if  they  are  intended  for  the  owners  of  these 
marks,  and  if  the  place,  the  town,  or  the  country  where  the  goods 
have  been  bought  or  manufactured  is  clearly  and  legibly  indi- 
cated in  an  indelible  manner.  The  Customs  Administration  shall 
confiscate  and  deliver  to  the  judicial  authorities,  together  with 
the  written  testimony  required,  the  marks  imported  by  third 
persons. 

The  Customs  Administration  shall  act  as  organ  of  the 
Ministry  of  Commerce  and  Agriculture  and  it  shall  come  to 
agreement  directly  with  the  latter  in  all  matters  affecting  the 
present  law. 

EXPLANATION  OF  THE  PRINCIPAL  WORDS  AND  TERMS  EMPLOYED  IN 

THE  PRESENT  LAW 
ART.  53.    In  the  application  of  the  present  law: 

1.  The  signification  of  the  word  "Mark"  is  determined  by 
the  first  article  of  the  law; 

2.  The  expression  "Commercial  Inscription"  designates 
any  inscription,  declaration  or  other  direct  or  indirect  designa- 
tion relative: 

a)  To  the  number,  quantity,  measure,  volume  or  weight  of 
objects ; 

b)  To  the  locality  or  the  country  where  the  merchandise 
has  been  manufactured  or  produced; 

c)  To  the  mode  of  manufacture  or  production  of  mer- 
chandise ; 

d)  To  the  material  of  which  it  is  composed; 

e)  To  the  existence  of  patents,  privileges  or  copyrights  rela- 
tive to  objects  on  which  the  inscription  is  affixed ; 

3.  The  expression  "False  Commercial  Inscription"  signi- 
fies a  commercial  inscription  deceitful  in  so  far  as  it  relates  to 
the  objects  on  which  it  is  affixed,  and  embraces  any  alteration 
of  a  commercial  inscription,  by  addition,  by  suppression  or  in 
any  other  manner,  provided  that  this  alteration  renders  the 
inscription  false;  the  fact  that  a  commercial  inscription  con- 
stitutes in  itself  alone  a  mark  or  part  of  a  mark  would  not 
prevent  such  an  inscription  from  being  considered  as  a  false 
commercial  inscription  in  the  sense  of  the  present  law; 

4.  The  expression  "merchandise"  signifies  anything  that 
can  be  made  the  object  of  commerce  or  industry; 


BULGARIA  137 

5.  The  expression  "infringement"  signifies  the  appropria- 
tion of  the  mark  of  another : 

6.  Any  mark  is  "imitated"  that  has  an  analogy  with  a 
mark  previously  registered,  destined  for  similar  articles,  and 
which  is  of  a  nature  to  lead  into  error  the  ordinary  purchaser. 
In  the  appreciation  of  the  measure  in  which  one  mark  is  an 
imitation  of  another,  there  must  be  taken  into  consideration  not 
the  differences  of  detail,  but  the  analogies  that  exist  between 
the  two  marks;  one  will  judge  not  from  the  details,  but  from 
the  entire  aspect  of  the  marks. 

CHAPTER  VI 

TRANSITORY  DISPOSITIONS 

ART.  54.  As  regards  those  trade  marks  registered  in 
virtue  of  the  Law  of  December  15,  1892,  they  shall  become  void 
within  six  months  after  the  present  law  has  taken  effect. 

ART.  55.  If  the  owners  of  such  trade  marks  desire  to  re- 
tain their  right  of  ownership  to  the  latter,  they  shall  be  bound 
to  register  them  anew  in  conformity  with  the  provisions  of  the 
present  law,  before  the  expiration  of  the  above  named  term. 

ART.  56.  The  fee  of  12  levas  paid  in  virtue  of  the  Law  of 
December  15,  1892,  shall  be  deducted  from  the  amount  of  the 
fee  provided  by  the  present  law. 

The  certificate  of  the  old  registration  shall  be  annexed  to 
the  application.  In  the  absence  of  this  document,  the  registra- 
tion applied  for  will  be  considered  as  new  and  the  entire  tax 
will  be  demandable. 

CHAPTER  VII 

FINAL  DISPOSITIONS 

ART.  57.  The  Law  concerning  Marks  of  Manufacture  and 
of  Commerce  of  December  15,  1892,  the  supplementary  disposi- 
tions of  December  20,  1893,  the  regulations  for  putting  them  in 
force,  as  well  as  all  provisions  in  conflict  with  the  present  law, 
are  abrogated. 

ART.  58.  The  present  law  shall  take  effect  three  months 
after  the  publication  in  the  Official  Journal* 

ART.  59.  A  regulation  specially  elaborated  by  the  Minister 
of  Commerce  and  Agriculture  will  determine  the  details  of  the 
application  of  the  present  law. 

ART.  60.  In  case  where,  in  the  future,  special  Tribunals 
of  Commerce  may  be  instituted  in  the  Principality,  proceedings 
brought  by  virtue  of  this  law  will  be  triable  before  these 
tribunals. 


*  January  27,  1904. 


CANADA 

TRADE  MARKS  AND  DESIGNS*  ACT,  R.  S.  1906 
CHAPTER  71 

SHORT  TITLE 

1.  This  Act  may  be  cited  as  the  Trade  Mark  and  Design 
Act.* 

GENERAL.  INTERPRETATION 
"Minister" 

2.  In  this  Act,  unless  the  context  otherwise  requires, ' '  Min- 
ister" means  the  Minister  of  Agriculture. 

DIVISION  OP  ACT 

3.  This  Act  is  divided  into  three  parts.    Part  I  applies 
only  to  Trade  Marks.  .   .   .  Part  III  is  general  and  applies  to 
both  Trade  Marks  and  Industrial  Designs. 


PARTI 

TRADE  MARKS 
Interpretation — Definitions 

4.  In  this  Part,  unless  the  context  otherwise  requires, — 

a)  " general  trade  mark"  means  a  trade  mark  used  in  con- 
nection with  the  sale  of  various  articles  in  which  a  proprietor 
deals  in  his  trade,  business,  occupation  or  calling  generally; 

b)  " specific  trade  mark"  means  a  trade  mark  used  in  con- 
nection with  the  sale  of  a  class  merchandise  of  a  particular 
description. 

What  shall  be  deemed  to  be  trade  marks 

5.  All  marks,  names,  labels,  brands,  packages,  or  other 
business  devices  which  are  adopted  for  use  by  any  person  in 
his  trade,  business,  occupation  or  calling,  for  the  purpose  of 
distinguishing  any  manufacture,  product  or  article  of  any  de- 
scription, manufactured,  produced,  compounded,  packed  or  of- 
fered for  sale  by  him,  applied  in  any  manner  whatever  either 
to  such  manufacture,  product  or  article,  or  to  any  package, 
parcel,  case,  box  or  other  vessel  or  receptacle  of  any  descrip- 
tion whatsoever  containing  the  same,  shall,  for  the  purposes  of 
this  Act,  be  considered  and  known  as  trade  marks. 

As  to  timber  or  lumber 

6.  Timber  or  lumber  of  any  kind  upon  which  labour  has 

*A11  reference  to  designs  omitted. 


CANADA  139 

been  expended  by  any  person  in  his  trade,  business,  occupation 
or  calling,  shall,  for  the  purposes  of  this  Act,  be  deemed  a  manu- 
facture, product  or  article. 

Seal  and  its  use 

7.  The  Minister  may  cause  a  seal  to  be  made  for  the  pur- 
poses of  this  Part,  and  may  cause  to  be  sealed  therewith  trade 
marks  and  other  instruments,  and  copies  of  such  trade  marks 
and  other  instruments,  proceeding  from  his  office  in  relation  to 
trade  marks. 

REGISTRATION 
Register  to  be  kept 

8.  A  register  shall  be  kept  at  the  Department  of  Agricul- 
ture for  the  registration  of  trade  marks. 

Registration  by  Minister 

9.  Subject  to  the  provisions  of  this  Act,  the  Minister  shall 
on  application  duly  made  in  that  behalf,  register  therein  the 
trade  mark  of  any  proprietor  applying  for  such  registration  in 
manner  as  provided  by  this  Act  in  that  behalf  and  by  the  rules 
and  regulations  made  thereunder. 

Nature  of  trade  mark  to  be  specified 

10.  Every  proprietor  of  a  trade  mark  who  applies  for  its 
registration  shall  state  in  his  application  whether  the  said  trade 
mark  is  intended  to  be  used  as  a  general  trade  mark  or  as  a 
specific  trade  mark. 

Minister  may  refuse  to  register  trade  mark  in  certain  cases 

11.  The  Minister  may  refuse  to  register  any  trade  mark: 
(a)  if  he  is  not  satisfied  that  the  applicant  is  undoubtedly 

entitled  to  the  exclusive  use  of  such  trade  mark; 

(fe)  if  the  trade  mark  proposed  for  registration  is  identical 
with  or  resembles  a  trade  mark  already  registered ; 

(c)  if  it  appears  that  the  trade  mark  is  calculated  to  deceive 
or  mislead  the  public ; 

(d)  if  the  trade  mark  contains  any  immorality  or  scan- 
dalous figure; 

(e)  if  the  so-called  trade  mark  does  not  contain  the  essen- 
tials necessary  to  constitute  a  trade  mark,  properly  speaking. 

Reference  to  the  Exchequer  Court 

12.  The  Minister  may  in  any  case  in  the  last  preceding 
section  mentioned,  if  he  thinks  fit,  refer  the  matter  to  the  Ex- 
chequer Court  of  Canada,  and,  in  that  event,  such  court  shall 
nave  jurisdiction  to  hear  and  determine  the  matter,  and  to  make 
an  order  determining  whether  and  subject  to  what  conditions, 
if  any,  registration  is  to  be  permitted. 


140  CANADA 

How  registration  may  be  effected 

13.  Subject  to  the  foregoing  provisions,  the  proprietor  of 
a  trade  mark  may,  on  forwarding  to  the  Minister  a  drawing  and 
description  in  duplicate  of  such  trade  mark,  and  a  declaration 
that  the  same  was  not  in  use  to  his  knowledge  by  any  other 
person  than  himself  at  the  time  of  his  adoption  thereof,  together 
with  the  fee  required  by  this  Act  in  that  behalf,  and  on  other- 
wise complying  with  the  provisions  of  this  Act  in  relation  to 
trade  marks  and  with  the  rules  and  regulations  made  thereunder, 
have  such  trade  mark  registered  for  his  own  exclusive  use. 

Exclusive  right  to  trade  mark 

2.  Thereafter  such  proprietor  shall  have  the  exclusive  right 
to  use  the  trade  mark  to  designate  articles  manufactured  or  sold 
by  him. 

Certificate  of  registration 

14.  Upon  any  trade  mark  being  registered  under  this  Act, 
the  Minister  shall  return  to  the  proprietor  registering  the  same 
one  copy  of  the  drawing  and  description  forwarded  to  him  with 
a  certificate  signed  by  the  Minister  to  the  effect  that  the  said 
trade  mark  has  been  duly  registered  in  accordance  with  the 
provisions  of  this  Act;  and  the  day,  month  and  year  of  the  entry 
of  the  trade  mark  in  the  register  shall  also  be  set  forth  in 
such  certificate. 

ASSIGNMENT 
Trade  marks  may  be  assigned 

15.  Every  trade  mark  register  in  the  office  of  the  Minis- 
ter shall  be  assignable  in  law. 

Entry 

2.  On  the  assignment  being  produced,  and  the  fee  by  this 
Act  prescribed  therefor  being  paid,  the  Minister  shall  cause 
the  name  of  the  assignee,  with  the  date  of  the  assignment  and 
such  other  details  as  he  sees  fit,  to  be  entered  in  the  margin  of 
the  register  of  trade  marks  on  the  folio  where  such  trade  mark 
is  registered. 

TIME  LIMIT 
Duration  of  general  trade  mark 

16.  A  general  trade  mark  once  registered  and  destined  to 
be  the  sign  in  trade  of  the  proprietor  thereof  shall  endure  with- 
out limitation. 

And  of  specific  trade  mark 

17.  A  specific  trade  mark,  when  registered,  shall  endure 
for  the  term  of  twenty-five  years,  but  may  be  renewed  before 
the  expiration  of  the  said  term  by  the  proprietor  thereof,  or  by 
his  legal  representative,  for  another  term  of  twenty-five  years, 
and  so  on  from  time  to  time;  but  every  such  renewal  shall  be 


CANADA  141 

registered  before  the  expiration  of  the  current  term  of  twenty- 
five  years. 

Cancellation  of  trade  mark 

18.  Any  person  who  has  registered  a  trade  mark  may  peti- 
tion for  the  cancellation  of  the  same,  and  the  Minister  may, 
on  receiving  such  petition,  cause  the  said  trade  mark  to  be  so 
cancelled. 

Effect  of  cancellation 

2.  Such  trade  mark  shall,  after  such  cancellation,  be  con- 
sidered as  if  it  had  never  been  registered  under  the  name  of 
the  said  person. 

RIGHT  OP  ACTION 
Suit  by  proprietor 

19.  An  action  or  suit  may  be  maintained  by  any  proprietor 
of  a  trade  mark  against  any  person  who  uses  the  registered 
trade  mark  of  such  proprietor,   or  any  fraudulent  imitation 
thereof,  or  who  sells  any  article  bearing  such  trade  mark  or 
any  such  imitation  thereof,  or  contained  in  any  package  of 
such  proprietor  or  purporting  to  be  his,  contrary  to  the  pro- 
visions of  this  Act. 

No  suit  unless  trade  mark  is  registered 

20.  No  person  shall  institute  any  proceeding  to  prevent 
the  infringement  of  any  trade  mark,  unless  such  trade  mark  is 
registered  in  pursuance  of  this  Act. 

OFFENCES  AND  PENALTIES 
Unlawful  use  of  trade  mark — Penalty 

21.  Every  person  other  than  the  proprietor  of  any  trade 
mark  who,  with  intent  to  deceive  and  to  induce  any  person  to 
believe  that  any  article  of  any  description  whatsoever  was  manu- 
factured, produced,  compounded,  packed  or  sold  by  the  pro- 
prietor of  such  trade  mark, — 

(a)  marks  any  such  article  with  any  trade  mark  registered 
under  the  provisions  of  this  Act,  or  with  any  part  of  such  trade 
mark,  whether  by  applying  such  trade  mark  or  any  part  thereof 
to  the  article  itself  or  to  any  package  or  thing  containing  such 
article,  or  by  using  any  package  or  thing  so  marked  which  has 
been  used  by  the  proprietor  of  such  trade  mark ;  or 

(b)  knowingly  sells   or  offers  for   sale  any  such  article 
marked  with  such  trade  mark  or  with  any  part  thereof ; 

is  guilty  of  an  indictable  offence  and  liable  for  each  offence  to 
a  fine  not  exceeding  one  hundred  dollars  and  not  less  than 
twenty  dollars. 

To  whom  payable 
2.    Such  fine  shall  be  paid  to  the  proprietor  of  such  trade 


142  CANADA 

mark  together  with  the  costs  incurred  in  enforcing  and  recover- 
ing the  same. 

Suit  by  proprietor  or  his  agent 

3.  Every  complaint  under  this  section  shall  be  made  by 
the  proprietor  of  such  trade  mark,  or  by  some  one  acting  on 
his  behalf  and  thereunto  duly  authorized. 

WARRANTY  UPON  SALE 
Warranty  that  trade  mark  is  genuine 
22.  Upon  the  sale  or  in  the  contract  for  the  sale  of  any 
goods  to  which  a  trade  mark,  or  mark,  or  trade  description  has 
been  applied,  the  vendor  shall,  unless  the  contrary  is  expressed 
in  some  writing,  signed  by  or  on  behalf  of  the  vendor,  and  deliv- 
ered at  the  time  of  the  sale  or  contract  to  and  accepted  by  the 
vendee,  be  deemed  to  warrant  that  the  mark  is  a  genuine  trade 
mark  and  not  forged  or  falsely  applied,  or  that  the  trade  de- 
scription is  not  a  false  trade  description  within  the  meaning 
of  Part  VII.  of  the  Criminal  Code. 


PART  III 

GENERALI 
Rules,  regulations  and  forms 

39.  The  Minister  may,  from  time  to  time,  subject  to  the 
approval  of  the  Governor  in  Council,  make  rules  and  regula- 
tions and  adopt  forms  for  the  purposes  of  this  Act  respecting 
trade  marks     .     .     . ;  and  such  rules,  regulations  and  forms  cir- 
culated in  print  for  the  use  of  the  public  shall  be  deemed  to  be 
correct  for  the  purposes  of  this  Act. 

Documents  deemed  valid 

2.  All  documents  executed  according  to  the  said  rules,  regu- 
lations and  forms,  and  accepted  by  the  Minister,  shall  be  deemed 
to  be  valid  so  far  as  relates  to  official  proceedings  under  this 
Act. 

CLERICAL  ERRORS 
Correction 

40.  Clerical  errors  which  occur  in  the  drawing  up  or  copy- 
ing of  any  instrument  under  this  Act  respecting  trade  marks 
.    .    .    shall  not  be  construed  as  invalidating  the  same,  but, 
when  discovered,  may  be  corrected  under  the  authority  of  the 
Minister. 

Inspection  of  registers 

41.  Any  person  may  be  allowed  to  inspect  the  register  of 
trade  marks 


CANADA  143 

Copies 

2.  The  Minister  may  cause  copies  of  representations  of 

trade  marks     .     .     .    to  be  delivered  on  the  applicant  for  the 

same  paying  the  fee  or  fees  prescribed  by  this  Act  in  that  behalf. 

PROCEDURE  AS  TO  RECTIFICATION  AND  ALTERATION 

Exchequer  Court  may  rectify  entries 

42.  The  Exchequer  Court  of  Canada  may,  on  the  informa- 
tion of  the  Attorney  General,  or  at  the  suit  of  any  person  ag- 
grieved by  any  omission,  without  sufficient  cause,  to  make  any 
entry  in  the  register  of  trade  marks     .    .     .    or  by  any  entry 
made  without  sufficient  cause  in  any  such  register,  make  such 
order  for  making,  expunging  or  varying  any  entry  in  any  such 
register  as  the  Court  thinks  fit;  or  the  Court  may  refuse  the 
application. 

Costs 

2.  In  either  case,  the  Court  may  make  such  order  with  re- 
spect to  the  costs  of  the  proceedings  as  the  Court  thinks  fit. 

Questions  to  be  decided 

3.  The  Court  may  in  any  proceedings  under  this  section, 
decide  any  question  that  may  be  necessary  or  expedient  to 
decide  for  the  rectification  of  any  such  register. 

Trade  mark  .  .  .  may  be  corrected  by  the  court 

43.  The   registered   proprietor   of   any   registered   trade 
mark    .    .    .    may  apply  to  the  Exchequer  Court  of  Canada 
for  leave  to  add  to  or  alter  any  such  trade  mark    ...    in 
any  particular  not  being  an  essential  particular,  and  the  Court 
may  refuse  or  grant  leave  on  such  terms  as  it  may  think  fit. 

Notice  to  Minister 

2.  Notice  of  any  intended  application  to  the  Court  under 
this  section  for  leave  to  add  to  or  alter  any  such  trade  mark 
.  .  .  shall  be  given  to  the  Minister,  and  he  shall  be  entitled 
to  be  heard  on  the  application. 

Consequent  rectification  of  register 

44.  A  certified  copy  of  any  order  of  the  Court  for  the  mak- 
ing, expunging  or  varying  of  any  entry  in  the  register  of  trade 
marks    ...    or  for  adding  to  or  altering  any  registered  trade 
mark    .    .    .    shall  be  transmitted  to  the  Minister  by  the  Regis- 
trar of  the  Court,  and  such  register  shall  thereupon  be  rectified 
or  altered  in  conformity  with  such  order,  or  the  purport  of  the 
order  otherwise  duly  entered  therein,  as  the  case  may  be. 

EVIDENCE 
No  proof  of  signature  of  certificate  required 

45.  Every  certificate  under  this  Act  that  any  trade  mark 
.    .    .    has  been  duly  registered  in  accordance  with  the  pro- 


144  CANADA 

visions  of  this  Act,  which  purports  to  be  signed  by  the  Minister 
or  the  Deputy  Minister  of  Agriculture  shall,  without  proof  of 
the  signature,  be  received  in  all  courts  in  Canada  as  prima  facie 
evidence  of  the  facts  therein  alleged. 

Table  of  fees 

46.  The  following  shall  be  the  fees  in  respect  to  registra- 
tion under  this  Act  which  shall  be  paid  to  the  Minister  in 
advance,  that  is  to  say : — 

On  every  application  to  register  a  general 
trade  mark,  including  certificate $30.00 

On  every  application  to  register  a  specific 
trade  mark,  including  certificate 25.00 

On  every  application  for  the  renewal  of  the 
registration  of  a  specific  trade  mark,  in- 
cluding certificate  20.00 

For  a  copy  of  every  certificate  of  registra- 
tion separate  from  the  return  of  the  du- 
plicate    1.00 

For  the  recording  of  every  assignment. . . .          2.00 

For  copies  of  documents  not  above  men- 
tioned, for  every  hundred  words  or  for 
every  fraction  thereof 0.50 

For  each  copy  of  any  drawing  or  emble- 
matic trade  mark  .  .  .  the  reasonable 
expense  of  preparing  the  same. 

Payable  to  Minister  of  Finance 

47.  All  fees  received  by  the  Minister,  under  this  Act,  shall 
be  paid  over  by  him  to  the  Minister  of  Finance. 

Return  of  fees  if  application  is  refused 

48.  In  case  any  trade  mark    ...    in  respect  of  which 
application  for  registry  is  made  under  this  Act  shall  not  be 
registered,  all  fees  paid  the  Minister  for  registration  shall  be 
returned  to  the  applicant  or  his  agent,  less,  in  the  case  of  trade 
marks,  the  sum  of  five  dollars    .    .    .    which  shall  be  retained 
as  compensation  for  office  expenses. 


TIMBER  MARKING  ACT 
CHAPTER  72 

SHORT  TITLE 
1.    This  Act  may  be  cited  as  the  Timber  Marking  Act. 


CANADA  145 

MARKS  AND  REGISTRATION 

Persons  engaged  in  lumbering  to  select,  register  and  use 

proper  marks 

2.  Every  person  engaged  in  the  business  of  lumbering  or 
the  getting  out  of  timber,  and  of  the  floating  or  rafting  of  the 
same  on  the  inland  waters  of  Canada,  within  the  provinces  of 
Ontario,  Quebec  and  New  Brunswick,  shall,  within  one  month 
after  he  engages  therein,  select  a  mark  or  marks,  and  cause  such 
mark  or  marks  to  be  registered  in  the  manner  herein  provided. 

Minister  of  Agriculture  to  register  marks  and  deliver 

certificates 

3.  The  Minister  of  Agriculture  shall  keep  at  the  Depart- 
ment of  Agriculture  a  book  to  be  called  the  Timber  Mark  Reg- 
ister, in  which  any  person  engaged  in  the  business  of  lumbering 
or  getting  out  timber  as  aforesaid,  may  have  his  timber  mark 
registered  upon  depositing  with  the   Minister  a  drawing  or 
impression  and  description  in  duplicate  of  such  timber  mark, 
together  with  a  declaration  that  the  same  is  not  and  was  not  in 
use,  to  his  knowledge,  by  any  person  other  than  himself  at  the 
time  of  his  adoption  thereof. 

On  certain  conditions — Certificates  shall  be  evidence 
(2)  The  Minister,  on  receipt  of  the  fee  hereinafter  pro- 
vided, shall  cause  the  said  timber  mark  to  be  examined,  to  ascer- 
tain whether  it  resembles  any  other  mark  already  registered; 
and,  if  he  finds  that  such  mark  is  not  identical  with,  or  does  not 
so  closely  resemble  any  other  timber  mark  already  registered 
as  to  be  confounded  therewith,  he  shall  register  the  same,  and 
shall  return  to  the  proprietor  thereof  one  copy  of  the  drawing 
and  description,  with  a  certificate  signed  by  the  Minister  or  the 
Deputy  Minister  of  Agriculture,  to  the  effect  that  the  said  mark 
has  been  duly  registered  in  accordance  with  the  provisions  of 
this  Act;  and  such  certificate  shall  further  set  forth  the  day, 
month  and  year  of  the  entry  thereof,  in  the  proper  register; 
and  every  such  certificate  shall  be  received  in  all  courts  in 
Canada  as  evidence  of  the  facts  therein  alleged,  without  proof 
of  the  signature. 

Exclusive  right  to  use  registered  mark 

4.  The  person  who  registers  such  timber  mark  shall  there- 
after have  the  exclusive  right  to  use  the  same,  to  designate  the 
timber  got  out  by  him  and  floated  or  rafted  as  aforesaid;  and 
he  shall  put  the  same  in  a  conspicuous  place  on  each  log  or 
piece  of  timber  so  floated  or  rafted. 

Marks  may  be  cancelled 

5.  Any  person  who  has  registered  a  timber  mark  may 


146  CANADA 

petition  for  the  cancellation  of  the  same,  and  the  Minister  may, 
on  receiving  such  petition,  cause  the  said  mark  to  be  cancelled ; 
and  the  same  shall,  after  such  cancellation,  be  considered  as  if 
it  had  never  been  registered  under  the  name  of  the  said  person. 
Registered  marks  assignable  and  how 

6.  Every  timber  mark  registered  at  the  Department  of 
Agriculture  shall  be  assignable  in  law;  and,  on  the  production 
of  the  assignment  and  the  payment  of  the  fee  hereinafter  men- 
tioned, the  Minister  shall  cause  the  name  of  the  assignee,  with 
the  date  of  the  assignment,  and  such  other  details  as  he  sees 
fit,  to  be  entered  on  the  margin  of  the  register  of  timber  marks 
on  the  folio  where  such  mark  is  registered. 

Different  marks  to  be  used 

7.  If  any  person  makes  application  to  register,  as  his 
own,  any  timber  mark  which  is  already  registered,  the  Minister 
shall  give  notice  of  the  fact  to  such  person,  who  may  then  select 
some  other  mark  and  forward  the  same  for  registration. 

Prohibition  against  using  another  person's  mark 

8.  No  person,  other  than  the  person  who  has  registered 
the  same,  shall  mark  any  timber  of  any  description  with  any 
mark  registered  under  the  provisions  of  this  Act,  or  with  any 
part  of  such  mark. 

Table  of  fees 

9.  The  following  fees  shall  be  payable,  that  is  to  say : — 
On  every  application  to  register  a  timber 

mark,  including  certificate $2.00 

For    each    certificate    of    registration    not 

already  provided  for 0.50 

For  each  copy  of  any  drawing,  the  reason- 
able expenses  of  preparing  the  same. 

For  recording  any  assignment 1.00 

(2)  Such  fees  shall  be  paid  over  by  the  Minister  of  Agri- 
culture to  the  Minister  of  Finance,  and  shall  form  part  of  the 
Consolidated  Revenue  Fund  of  Canada. 

Minister  may  make  rules  and  adopt  forms 

10.  The  Minister  may,  from  time  to  time,  subject  to  the 
approval  of  the  Governor  in  Council,  make  rules  and  regula- 
tions and  adopt  forms  for  the  purposes  of  this  Act. 

OFFENCES  AND  PENALTIES 

Failing  to  select,  register  and  use  proper  marks  by 
lumberman,  etc. — Penalty 

11.  Every  person  engaged  in  the  business  of  lumbering 
or  getting  out  timber,  and  floating  or  rafting  the  same  on  the 
inland  waters  of  Canada,  within  the  provinces  of  Ontario,  Que- 


CANADA  147 

bee  and  New  Brunswick,  who  fails,  within  one  month  after  he 
engages  therein,  to  select  a  mark  or  marks,  and  cause  such 
mark  or  marks  to  be  registered  in  the  manner  hereinbefore  pro- 
vided, or  to  put  the  same  in  a  conspicuous  place  on  each  log 
or  piece  of  timber  so  floated  or  rafted,  shall  incur  a  penalty 
of  fifty  dollars. 
Marking  timber  with  a  mark  registered  by  another — Penalty 

12.  Every  person,  other  than  the  person  who  has  regis- 
tered the  same,  who  marks  any  timber  of  any  description  with 
any  mark  registered  under  the  provisions  of  this  Act,  or  with 
any  part  of  such  mark,  shall,  on  summary  conviction  before 
two  justices  of  the  peace,  be  liable,  for  each  offence,  to  a  penalty 
not  exceeding  one  hundred  dollars  and  not  less  than  twenty 
dollars,  which  amount  shall  be  paid  to  the  proprietor  of  such 
mark,  together  with  the  costs  incurred  in  enforcing  and  recover- 
ing the  same. 

Who  may  complain 

(2)  Every  complaint  of  violation  of  this  section  shall  be 
made  by  the  proprietor  of  such  timber  mark,  or  by  some  one 
acting  on  his  behalf  and  thereunto  duly  authorized. 


CEYLON 

ORDINANCE  NO.  14  OF  1888 

PROCLAIMED  MARCH  25,  1889,  AS  AMENDED  BY  NO.  4 

OF  1890,  NO.  7  OF  1904,  AND  NO.  9  OF  1906 

Short  title.     Commencement 

1.  This  Ordinance  may  be  cited  as  "The  Trade  Marks 
Ordinance,  1888, ' '  and  it  shall  come  into  operation  at  such  time 
as  the  Governor  shall  appoint  by  Proclamation  to  be  published 
in  the  Government  Gazette. 

PBELIMINABY 
Interpretation  clause :  "Person."  "Registrar" 

2.  In  and  for  the  purposes  of  this  Ordinance,  unless  the 
context  otherwise  requires: 

"Person"  includes  a  body  corporate; 

"Registrar"  means  the  Registrar-General,  and  includes 
any  officer  in  the  Registrar-General's  Department  to  the  extent 
to  which  he  may  be  authorized  by  general  or  special  order  by 
the  Governor  to  discharge  the  duty  of  the  Registrar  under  this 
Ordinance. 

"Prescribed" 

"Prescribed"  means  prescribed  by  the  schedule  to  this  Or- 
dinance or  by  general  rules  under  or  within  the  meaning  of 
this  Ordinance. 

"The  court"  means  the  District  Court  of  Colombo. 
"The  Court"— "Trade  mark" 

2.  (1)  A  "trade  mark"  must  consist  of  or  contain  at  least 
one  of  the  following  essential  particulars : 

a)  A  name  of  an  individual  or  firm  printed,  impressed,  or 
woven  in  some  particular  and  distinctive  manner;  or 

b)  A  written  signature  or  copy  of  a  written  signature  of 
the  individual  or  firm  applying  for  registration  thereof  as  a 
trade  mark;  or 

c)  A  distinctive  device,  mark,  stamp,  brand,  heading,  label, 
or  ticket;  or 

d)  An  invented  word  or  invented  words;  or 

e)  A  word  or  words  having  no  reference  to  the  character 
or  quality  of  the  goods,  and  not  being  a  geographical  name. 

(2)  There  may  be  added  to  any  one  or  more  of  the  essen- 
tial particulars  mentioned  in  sub-section  (1)  any  letters,  words, 
or  figures,  or  combination  of  letters,  words,  or  figures,  or  any 
of  them,  but  the  applicant  for  registration  of  any  such  addi- 


CEYLON  149 

tional  matter  must  state  in  his  application  the  essential  par- 
ticulars of  the  trade  mark,  and  must  disclaim  in  his  application 
any  right  to  the  exclusive  use  of  the  added  matter,  and  a  copy 
of  the  statement  and  disclaimer  shall  be  entered  in  the  register. 
(3)  Provided  as  follows: 

a)  A  person  need  not  under  sub-section  (2)  disclaim  his 
own  name  or  the  foreign  equivalent  thereof,  or  his  place  of  busi- 
ness, but  no  entry  of  any  such  name  shall  affect  the  right  of  any 
owner  of  the  same  name  to  use  that  name  or  the  foreign  equiva- 
lent thereof; 

b)  Any  special  and  distinctive  word  or  words,  .letter,  figure, 
or  combination  of  letters  and  figures  used  as  a  trade  mark  be- 
fore the  coming  into  operation  of  this  Ordinance  may  be  regis- 
tered as  a  trade  mark  under  this  Ordinance. 

REGISTRATION  OF  TRADE  MARKS 
Application  for  registration 

3.  (1)  Any  person  claiming  to  be  the  proprietor  of  a  trade 
mark  may  by  himself  or  his  agent  apply  to  the  Registrar  for 
an  order  for  the  registration  thereof. 

(2)  The  application  must  be  made  in  the  prescribed  form, 
and  must  be  accompanied  by  not  less  than  three  representations 
of  the  trade  mark. 

(3)  The  applicant  must  state  the  particular  goods  or  classes 
of  goods  in  connection  with  which  he  desires  the  trade  mark  to 
be  registered. 

(4)  The  application  must  be  left  with,  or  sent  by  post  to, 
the  Registrar. 

(5)  The  date  of  the  delivery  or  receipt  of  the  application 
shall  be  endorsed  thereon,  and  recorded  in  the  Registrar's  office. 

(6)  When  an  applicant  for  the  registration  of  a  trade  mark 
is  out  of  the  island  at  the  time  of  making  the  application,  he 
shall  give  the  Registrar  an  address  for  service  in  the  island, 
and  if  he  fails  to  do  so  the  application  shall  not  be  proceeded 
with  until  the  address  has  been  given. 

Registrar  may  make  order  for  registration 

4.  (1)  Upon  such  application  as  aforesaid,  the  Registrar 
may,  after  such  inquiry  as  he  thinks  fit,  and  subject  to  the  pro- 
visions hereinafter  contained,  make  an  order  authorizing  the 
registration  of  the  trade  mark. 

(2)  When  an  order  has  been  made  under  this  section,  the 
Registrar  shall  cause  the  trade  mark  to  be  registered  in  a  book 
to  be  kept  by  him  for  that  purpose,  and  to  be  called  the  Register 
of  Trade  Marks. 

(3)  The  date  of  registration  shall  be  recorded  in  the  said 


150  CEYLON 

register. 

Limit  of  time  for  proceeding  with  application 

5.  Where  registration  of  a  trade  mark  shall  not  be  com- 
pleted within  twelve  months  from  the  date  of  the  application, 
by  reason  of  default  on  the  part  of  the  applicant,  the  Registrar 
shall  give  notice  of  the  non-completion  to  the  applicant  or  to 
his  agent,  and  if  at  the  expiration  of  fourteen  days  from  that 
notice,  or  of  such  further  time  as  the  Registrar  may  in  special 
cases  permit,  the  registration  is  not  completed,  the  application 
shall  be  deemed  to  be  abandoned. 

Connection  of  trade  mark  with  goods 

6.  A  trade  mark  must  be  registered  for  particular  goods 
or  classes  of  goods. 

Registration  of  a  series  of  marks 

7.  When  a  person  claiming  to  be  the  proprietor  of  several 
trade  marks,  which,  while  resembling  each  other  in  the  material 
particulars  thereof,  yet  differ  in  respect  of  (a)  the  statement 
of  the  goods  for  which  they  are  respectively  used  or  proposed 
to  be  used,  or  (b)  statements  of  numbers,  or  (c)  statements  of 
price,  or  (d)  statements  of  quality,  or  (e)  statements  of  names 
of  places,  seeks  to  register  such  trade  marks,  they  may  be  regis- 
tered as  a  series  in  one  registration.    A  series  of  trade  marks 
shall  be  assignable  and  transmissible  only  as  a  whole,  but  for 
all  other  purposes  each  of  the  trade  marks  composing  a  series 
shall  be  deemed  and  treated  as  registered  separately. 

Trade  marks  may  be  registered  in  any  colour 

8.  A  trade  mark  may  be  registered  in  any  colour  or  colours, 
and  such  registration  shall,  subject  to  the  provisions  of  this 
Ordinance,  confer  on  the  registered  owner  the  exclusive  right 
to  use  the  same  in  that  or  any  other  colour  or  colours. 

Advertisement  of  application 

9.  Every  application  for  registration  of  a  trade  mark 
under  this  Ordinance  shall,  as  soon  as  may  be  after  its  receipt, 
be  advertised  by  the  Registrar  in  the  Government  Gazette  and 
in  one  or  more  of  the  local  newspapers,  unless  the  Registrar 
refuse  to  entertain  the  application. 

Opposition  to  registration 

10.  (1)  Any  person  may  within  one  month,  or  such  fur- 
ther time,  not  exceeding  three  months,  as  the  Registrar  may 
allow,  of  the  advertisement  of  the  application,  give  notice  in 
duplicate  to  the  Registrar  of  opposition  to  registration  of  the 
trade  mark,  and  the  Registrar  shall  send  one  copy  of  such 
notice  to  the  applicant. 

(2)  Within  one  month  after  receipt  of  such  notice,  or  such 


CEYLON  151 

further  time  as  the  Registrar  may  allow,  the  applicant  may 
send  to  the  Registrar  a  counter-statement  in  duplicate  of  the 
grounds  on  which  he  relies  for  his  application;  and  if  he  does 
not  do  so  shall  be  deemed  to  have  abandoned  his  application. 

3)  If  the  applicant  sends  such  counter-statement,  the  Regis- 
trar shall  furnish  a  copy  thereof  to  the  person  who  gave  notice 
of  opposition,  and  shall  require  him  to  give  security  in  such 
manner  and  to  such  amount  as  the  Registrar  may  require  for 
such  costs  as  may  be  awarded  in  respect  of  such  opposition; 
and  if  such  security  is  not  given  within  fourteen  days  after 
such  requirement  was  made  or  such  further  time  as  the  Regis- 
trar may  allow,  the  opposition  shall  be  deemed  to  be  withdrawn. 

(4)  If  the  person  who  gave  notice  of  opposition  duly  gives 
such  security  as  aforesaid,  the  Registrar  shall  inform  the  ap- 
plicant thereof  in  writing,  and  thereafter  the  case  shall  be 
deemed  to  stand  for  the  determination  of  the  court. 

(5)  If  the  applicant  abandons  his  application  after  notice 
of  opposition  in  pursuance  of  this  section,  he  shall  be  liable  to 
pay  to  the  opponent  such  costs  in  respect  of  the  opposition  as 
the  Registrar  may  determine  to  be  reasonable. 

(6)  Where  the  opponent  is  out  of  the  island  he  shall  give 
the  Registrar  an  address  for  service  in  the  island. 

Case  how  brought  before  court 

11.  (1)  When  a  case  stands  for  the  determination  of  the 
court  under  the  provisions  of  the  last  preceding  section,  the 
Registrar  shall  require  the  applicant,  within  one  month  or  such 
further  time  as  the  Registrar  may  allow,  to  make  a  written 
application  to  the  court  for  an  order  that,  notwithstanding  the 
opposition  of  which  notice  has  been  given,  the  registration  of 
the  trade  mark  be  proceeded  with  by  the  Registrar,  or  to  take 
such  other  proceedings  as  may  be  proper  and  necessary  for  the 
determination  of  the  case  by  the  court. 

(2)  The  applicant  shall  thereupon  make  his  application  or 
take  such  other  proceedings  as  aforesaid,  within  the  period  of 
one  month  above  named,  or  such  further  time  as  the  Registrar 
may  allow,  and  shall  also  within  the  like  period  give  notice 
thereof  to  the  Registrar. 

(3)  If  the  applicant  shall  fail  to  make  such  application  or 
to  take  such  other  proceedings,  of  which  failure  the  non-receipt 
by  the  Registrar  of  the  said  notice  shall  be  sufficient  proof,  the 
applicant  shall  be  deemed  to  have  abandoned  his  application. 

Assignment  and  transmission  of  trade  mark 

12.  A  trade  mark  when  registered  shall  be  assigned  and 
transmitted  only  in  connection  with  the  good- will  of  the  business 
concerned  in  the  particular  goods  or  classes  of  goods  for  which 


152  CEYLON 

it  has  been  registered,  and  shall  be  determinable  with  that 
good-will. 

Conflicting  claims  to  registration 

13.  Where  each  of  several  persons  claims  to  be  registered 
as  proprietor  of  the  same  trade  mark,  the  Registrar  may  re- 
fuse to  register  any  of  them  until  their  rights  have  been  deter- 
mined according  to  law;  and  the  Registrar  may  require  the 
claimants  to  submit  their  rights  to  the  court. 

Submission  to  court  of  conflicting  claims — Settlements  of 

special  case 

14.  The  manner  in  which  the  rights  of  such  claimants  may 
be  submitted  to  the  court  shall,  unless  the  court  otherwise  order, 
be  by  a  special  case,  and  such  special  case,  which  shall  be  sub- 
ject to  a  stamp  duty  of  one  rupee,  shall  be  filed  and  proceeded 
with  in  like  manner  as  any  other  special  case  submitted  to  the 
court,  or  in  such  other  manner  as  the  court  may  direct.    The 
special  case  may  be  agreed  to  by  the  claimants,  or  if  they  differ 
may  be  settled  by  the  Registrar  on  payment  of  the  prescribed 
fee. 

Restrictions  on  registration 

15.  (1)  Except  where  the  court  has  decided  that  two  or 
more  persons  are  entitled  to  be  registered  as  proprietors  of 
the  same  trade  mark,  the  Registrar  shall  not  register  in  respect 
of  the  same  goods  or  description  of  goods  a  trade  mark  iden- 
tical with  one  already  on  the  register  with  respect  to  such  goods 
or  description  of  goods. 

(2)  Except  as  aforesaid,  the  Registrar  shall  not  register 
with  respect  to  the  same  goods  or  description  of  goods  a  trade 
mark  having  such  resemblance  to  a  trade  mark  already  on  the 
register  with  respect  to  such  goods  or  description  of  goods  as 
to  be  calculated  to  deceive. 

Further  restriction  on  registration 

16.  It  shall  not  be  lawful  to  register  as  part  of,  or  in  com- 
bination with,  a  trade  mark  any  words  the  use  of  which  would, 
by  reason  of  their  being  calculated  to  deceive  or  otherwise,  be 
deemed  disentitled  to  protection  in  a  court  of  justice,  or  any 
scandalous  design. 

Power  to  provide  for  entry  on  register  of  common  marks  as 
addition  to  trade  marks 

17.  (1)  Nothing  in  this  Ordinance  shall  be  construed  to 
prevent  the  Registrar  entering  on  the  register,  in  the  prescribed 
manner,  and  subject  to  the  prescribed  conditions,  as  an  addition 
to  any  trade  mark — 

a)  In  the  case  of  an  application  for  registration  of  a  trade 
mark  used  before  the  coming  into  operation  of  this  Ordinance, 


GEYLON  153 

any  distinctive  device,  mark,  stamp,  brand,  heading,  label,  ticket, 
letter,  word,  or  figure,  or  combination  of  letters,  words,  or 
figures,  though  the  same  is  common  to  the  trade  in  the  goods 
with  respect  to  which  the  application  is  made; 

b)  In  the  case  of  an  application  for  registration  of  a  trade 
mark  not  used  before  the  coming  into  operation  of  this  Ordi- 
nance, any  distinctive  word  or  combination  of  words,  though 
the  same  is  common  to  the  trade  in  the  goods  with  respect  to 
which  the  application  is  made. 

(2)  The  applicant  for  registration  of  any  such  addition 
must,  however,  state  in  his  application  the  essential  particulars 
of  the  trade  mark,  and  must  disclaim  in  his  application  any 
right  to  the  exclusive  use  of  the  added  matter,  and  a  copy  of 
the  statement  and  disclaimer  shall  be  entered  on  the  register. 

Provided  that  a  person  need  not  under  this  section  disclaim 
his  own  name  or  the  foreign  equivalent  thereof,  or  his  place  of 
business,  but  no  entry  of  any  such  shall  affect  the  right  of  any 
owner  of  the  same  name  to  use  that  name  or  the  foreign  equiva- 
lent thereof. 

(3)  Any  device,  mark,  stamp,  brand,  heading,  label,  ticket, 
letter,  word,  figure,  or  combination  of  letters,  words,  or  figures 
which  was  or  were,  before  the  coming  into  operation  of  this 
Ordinance,  publicly  used  by  more  than  three  persons  on  the 
same  or  a  similar  description  of  goods,  shall,  for  the  purposes 
of  this  section,  be  deemed  common  to  the  trade  in  such  goods. 

EFFECT  OF  REGISTRATION 
Effect  of  application  for  registration 

18.  Application  for  registration  of  a  trade  mark  shall  be 
deemed  to  be  equivalent  to  the  public  use  of  the  trade  mark, 
and  the  date  of  the  application  shall,  for  the  purposes  of  this 
Ordinance,  be  deemed  to  be,  and  as  from  the  twenty-second  day 
of  December,  one  thousand  eight  hundred  and  eighty-eight,  to 
have  been  the  date  of  registration. 

Right  of  first  proprietor  to  exclusive  use  of  trade  mark 

19.  The  registration  of  a  person  as  proprietor  of  a  trade 
mark  shall  be  prima  facie  evidence  of  his  right  to  the  exclusive 
use  of  the  trade  mark,  and  shall,  after  the  expiration  of  five 
years  from  the  date  of  the  registration,  be  conclusive  evidence 
of  his  right  to  the  exclusive  use  of  the  trade  mark,  subject  to 
the  provisions  of  this  Ordinance. 

Restrictions  on  actions  for  infringement,  and  on  defence  to 
action  in  certain  cases 

20.  A  person  shall  not  be  entitled  to  institute  any  proceed- 
ing in  a  civil  court  to  prevent  or  to  recover  damages  for  the 
infringement  of  a  trade  mark,  unless,  in  the  case  of  a  trade 


154  CEYLON 

mark  capable  of  being  registered  under  this  Ordinance,  it  has 
been  registered  in  pursuance  of  this  Ordinance ;  or,  in  the  case 
of  any  other  trade  mark  in  use  before  the  coming  into  opera- 
tion of  this  Ordinance,  registration  thereof,  under  this  Ordi- 
nance, has  been  refused.  The  Registrar  may,  on  request,  and 
on  payment  of  the  prescribed  fee,  grant  a  certificate  that  such 
registration  has  been  refused. 

Certificate  as  to  exclusive  use,  and  costs  thereon 

20.  (a)  In  an  action  for  infringement  of  a  registered  trade 
mark  the  court  or  a  judge  may  certify  that  the  right  to  the 
exclusive  use  of  the  trade  mark  came  in  question,  and  if  the 
court  so  certifies,  then  in  any  subsequent  action  for  infringe- 
ment the  plaintiff  in  that  action,  on  obtaining  a  final  order  or 
judgment  in  his  favour,  shall  have  his  full  costs,  charges,  and 
expenses,  as  between  proctor  and  client,  unless  the  court  trying 
the  subsequent  action  certifies  that  he  ought  not  to  have  the 
same. 

REGISTER  OF  TRADE  MARKS 

21.  There  shall  be  kept  at  the  Registrar's  office  a  book 
called  the  register  of  trade  marks,  wherein  shall  be  entered  the 
names  and  addresses  of  proprietors  of  registered  trade  marks, 
notifications   of  assignments,  and  of  transmissions   of  trade 
marks,  and  such  other  matters  as  may  be  from  time  to  time 
prescribed. 

Removal  of  trade  marks  after  fourteen  years  unless  fee  paid 

22.  (1)  At  a  time  not  being  less  than  two  months  nor  more 
than  three  months  before  the  expiration  of  fourteen  years  from 
the  date  of  the  registration  of  a  trade  mark,  the  Registrar  shall 
send  notice  to  the  registered  proprietor  that  the  trade  mark 
will  be  removed  from  the  register  unless  the  proprietor  pays 
to  the  Registrar  before  the  expiration  of  such  fourteen  years 
(naming  the  date  at  which  the  same  will  expire)  the  prescribed 
fee ;  and  if  such  fee  be  not  previously  paid,  the  Registrar  shall, 
at  the  expiration  of  one  month  from  the  date  of  the  giving  of 
the  first  notice,  send  a  second  notice  to  the  same  effect. 

(2)  If  such  fee  be  not  paid  before  the  expiration  of  such 
fourteen  years,  the  Registrar  may,  after  the  end  of  three  months 
from  the  expiration  of  such  fourteen  years,  remove  the  mark 
from  the  register;  and  so  from  time  to  time  at  the  expiration 
of  every  period  of  fourteen  years. 

(3)  If  before  the  expiration  of  the  said  three  months  the 
registered  proprietor  pays  the  said  fee  together  with  the  addi- 
tional prescribed  fee,  the  Registrar  may,  without  removing  such 
trade  mark  from  the  register,  accept  the  said  fee  as  if  it  had 
been  paid  before  the  expiration  of  the  said  fourteen  years. 


CEYLON  155 

(4)  Where  after  the  said  three  months  a  trade  mark  has 
been  removed  from  the  register  for  non-payment  of  the  pre- 
scribed fee,  the  Registrar  may,  if  satisfied  that  it  is  just  so  to 
do,  restore  such  trade  mark  to  the  register  on  payment  of  the 
prescribed  additional  fee. 

(5)  Where  a  trade  mark  has  been  removed  from  the  regis- 
ter for  non-payment  of  the  fee,  or  otherwise,  such  trade  mark 
shall,  nevertheless,  for  the  purpose  of  any  application  for  regis- 
tration during  one  year  next  after  the  date  of  such  removal,  be 
deemed  to  be  a  trade  mark  which  is  already  registered,  unless  it 
is  shown  to  the  satisfaction  of  the  Registrar  that  the  non-pay- 
ment of  the  fee  arises  from  the  death  or  bankruptcy  of  the 
registered  proprietor,  or  from  his  having  ceased  to  carry  on 
business,  and  that  no  person  claiming  under  that  proprietor  or 
under  his  bankruptcy  is  using  the  trade  mark. 

GENERAL 
Trust  not  to  be  entered  in  register 

23.  There  shall  not  be  entered  in  the  register  kept  under 
this  Ordinance,  or  be  receivable  by  the  Registrar,  any  notice  of 
any  trust  expressed,  implied,  or  constructive. 

Refusal  to  register  in  certain  cases 

24.  The  Registrar  may  refuse  to  register  a  trade  mark  of 
which  the  use  would,  in  his  opinion,  be  contrary  to  law  or 
morality. 

Entry  of  assignments  and  transmissions  in  register 

25.  Where  a  person  becomes  entitled  by  assignment,  trans- 
mission, or  other  operation  of  law  to  a  registered  trade  mark, 
the  Registrar  shall,  on  request,  and  on  proof  of  title  to  his  satis- 
faction, cause  the  name  of  such  person  to  be  entered  as  pro- 
prietor of  the  trade  mark  in  the  register  of  trade  marks.    The 
person  for  the  time  being  entered  in  the  register  of  trade  marks 
as  proprietor  of  a  trade  mark  shall,  subject  to  the  provisions 
of  this  Ordinance  and  to  any  rights  appearing  from  such  regis- 
ter to  be  vested  in  any  other  person,  have  power  absolutely  to 
assign,  grant  licenses  as  to,  or  otherwise  deal  with,  the  same, 
and  to  give  effectual  receipts  for  any  consideration  for  such 
assignment,  license,  or  dealing.    Provided  that  any  equities  in 
respect  of  such  trade  mark  may  be  enforced  in  like  manner  as 
in  respect  of  any  other  personal  property. 

Inspection  of  and  extracts  from  register 

26.  The  register  kept  under  this  Ordinance  shall  at  all 
convenient  times  be  open  to  the  inspection  of  the  public,  subject 
to  the  provisions  of  this  Ordinance  and  to  such  regulations  as 
may  be  prescribed ;  and  certified  copies,  sealed  with  the  seal  of 


156  CEYLON 

the  Registrar's  office,  of  any  entry  in  any  such  register  shall  be 
given  to  any  person  requiring  the  same,  on  payment  of  the  pre- 
scribed fee. 

Sealed  copies  to  be  received  in  evidence 

27.  Printed  or  written  copies  or  extracts  purporting  to  be 
certified  by  the  Registrar,  and  sealed  with  the  seal  of  the  Regis- 
trar's office,  of  or  from  any  document,  register,  and  other  book 
filed  or  kept  under  this  Ordinance  in  the  said  office,  shall  be 
admitted  in  evidence  in  all  courts  in  this  colony,  and  in  all  pro- 
ceedings, without  further  proof  or  production  of  the  originals. 

Rectification  of  register  by  court 

28.  (1)  The  court  may,  on  the  application  of  any  person 
aggrieved  by  the  omission  without  sufficient  cause  of  the  name 
of  any  person  from  the  register  kept  under  this  Ordinance,  or 
by  any  entry  made  without  sufficient  cause  in  any  such  register, 
make  such  order  for  making,  expunging,  or  varying  the  entry 
as  the  court  thinks  fit ;  or  the  court  may  refuse  the  application ; 
and  in  either  case  may  make  such  order  with  respect  to  the  costs 
of  the  proceedings  as  the  court  thinks  fit. 

(2)  The  court  may  in  any  proceeding  under  this  section 
decide  any  question  that  it  may  be  necessary  or  expedient  to 
decide  for  the  rectification  of  a  register,  and  may  direct  an  issue 
to  be  tried  for  the  decision  of  any  question  of  fact,  and  may 
award  damages  to  the  party  aggrieved. 

(3)  Any  order  of  the  court  rectifying  a  register  shall  direct 
that  due  notice  of  the  rectification  be  given  to  the  Registrar. 

Power  to  correct  clerical  errors 

29.  The  Registrar  may,  on  request  in  writing,  accompanied 
by  the  prescribed  fee — 

a)  Correct  any  clerical  error  in  or  in  connection  with  an 
application  for  the  registration  of  a  trade  mark ;  or 

b)  Correct  any  clerical  error  in  the  name,  style,  or  address 
of  the  registered  proprietor  of  a  trade  mark;  or 

c)  Cancel  the  entry  or  part  of  the  entry  of  a  trade  mark 
on  the  register:    Provided  that  the  applicant  accompanies  his 
request  by  an  affidavit  made  by  himself,  stating  his  name,  ad- 
dress, and  calling,  and  that  he  is  the  person  whose  name  appears 
on  the  register  as  the  proprietor  of, the  said  trade  mark; 

d)  Permit  an  applicant  for  registration  of  a  trade  mark 
to  amend  his  application  by  omitting  any  particular  goods  or 
classes  of  goods  in  connection  with  which  he  has  desired  the 
trade  mark  to  be  registered. 

Alteration  of  registered  trade  mark 

30.  (1)  The  registered  proprietor  of  any  registered  trade 


CEYLON  157 

mark  may  apply  to  the  court  for  leave  to  add  to  or  alter  such 
mark  in  any  particular,  not  being  an  essential  particular  within 
the  meaning  of  this  Ordinance;  and  the  court  may  refuse  or 
grant  leave  on  such  terms  as  it  may  think  fit. 

(2)  Notice  of  any  intended  application  to  the  court  under 
this  section  shall  be  given  to  the  Registrar  by  the  applicant; 
and  the  Registrar  shall  be  entitled  to  be  heard  on  the  application. 

(3)  If  the  court  grants  leave,  the  Registrar  shall,  on  proof 
thereof,  and  on  payment  of  the  prescribed  fee,  cause  the  regis- 
ter to  be  altered  in  conformity  with  the  order  of  leave. 

Applications  to  be  stamped 

31.  Every  application  made  to  the  court  under  section  11, 
28,  or  30  shall  be  subject  to  a  stamp  duty  of  one  rupee,  and  all 
proceedings  thereunder  shall  be  conducted  in  such  manner  as 
the  court  may  direct. 

Stamp  duties 

32.  The  minimum  stamp  duties  chargeable  in  the  district 
courts  in  civil  proceedings  under  the  provisions  of  the  Ordi- 
nance for  the  time  being  in  force  relating  to  stamps  shall,  so 
far  as  the  same  may  be  applicable  and  except  as  herein  other- 
wise provided,  be  charged  in  all  proceedings  in  the  court  under 
this  Ordinance.    But  in  no  case  shall  the  Registrar  be  required 
to  use  any  stamp  or  be  charged  with  any  stamp  duty. 

Appeal 

33.  Every  judgment  or  order  by  the  district  court  under 
this  Ordinance  shall  be  subject  to  an  appeal  to  the  Supreme 
Court,  and  such  appeal  shall  be  subject  to  the  same  rules  which 
govern  interlocutory  appeals  from  district  courts ;  and  the  mini- 
mum stamp  duties  chargeable  in  the  Supreme  Court  under  the 
provisions  of  the  Ordinance  for  the  time  being  in  force  relating 
to  stamps  shall,  so  far  as  the  same  may  be  applicable,  be  charged 
in  all  proceedings  relating  to  or  in  connection  with  such  appeal. 

Exercise  of  discretionary  power  by  Registrar 

34.  When  any  discretionary  power  is  by  this  Ordinance 
given  to  the  Registrar,  he  shall  not  exercise  that  power  ad- 
versely to  the  applicant  for  registration  of  a  trade  mark  with- 
out (if  so  required  within  the  prescribed  time  by  the  applicant) 
giving  the  applicant  an  opportunity  of  being  heard  personally 
or  by  his  agent. 

Registrar  may  take  directions  of  law  officers 

35.  The  Registrar  may,  in  any  case  of  doubt  or  difficulty 
arising  in  the  administration  of  any  of  the  provisions  of  this 
Ordinance,  apply  to  the  Attorney-General  or  Solicitor-General 
for  directions  in  the  matter. 


158  CEYLON 

Certificate  of  Registrar  to  be  evidence 

36.  A  certificate  purporting  to  be  under  the  hand  of  the 
Registrar  as  to  any  entry,  matter,  or  thing  which  he  is  author- 
ized by  this  Ordinance,  or  any  general  rules  made  thereunder, 
to  make  or  do,  shall  be  prima  facie  evidence  of  the  entry  having 
been  made,  and  of  the  contents  thereof,  and  of  the  matter  or 
thing  having  been  done  or  left  undone. 

Applications  and  notices  by  post 

37.  (1)  Any  application,  notice,  or  other  document  author- 
ized or  required  to  be  left  with  or  sent  to  the  Registrar,  or  to 
any  other  person  under  this  Ordinance,  may  be  sent  by  a  regis- 
tered letter  through  the  post;  and  if  so  sent  shall  be  deemed 
to  have  been  so  left  or  given  respectively  at  the  time  when  the 
letter  containing  the  same  would  be  delivered  in  the  ordinary 
course  of  post. 

(2)  In  proving  such  service  or  sending,  it  shall  be  sufficient 
to  prove  that  the  letter  was  properly  addressed  and  registered 
at  the  post  office. 

Provisions  as  to  public  holidays 

38.  Whenever  the  last  day  fixed  by  this  Ordinance,  or  by 
any  rule  for  the  time  being  in  force,  for  leaving  any  document 
with,  or  paying  any  fee  to  the  Registrar,  shall  fall  on  a  public 
holiday,  it  shall  be  lawful  to  leave  such  document  or  to  pay  such 
fee  on  the  day  next  following  such  public  holiday,  or  holidays, 
if  two  or  more  of  them  occur  consecutively. 

Case  of  infant,  lunatic,  &c. 

39.  If  any  person  is,  by  reason  of  infancy,  lunacy,  or  other 
inability,  incapable  of  making  any  affidavit  or  doing  anything 
required  or  permitted  by  this  Ordinance,  or  by  any  rules  made 
under  the  authority  of  this  Ordinance,  then  the  guardian  of 
such  incapable  person,  or  if  there  be  none,  any  person  appointed 
by  any  court  possessing  jurisdiction  in  respect  of  the  property 
of  incapable  persons,  upon  the  petition  of  any  person  on  behalf 
of  such  incapable  person,  or  of  any  other  person  interested  in 
the  making  of  such  affidavit  or  doing  such  thing,  may  make 
such  affidavit,  or  an  affidavit  as  nearly  corresponding  thereto 
as  circumstances  permit,  and  do  such  thing  in  the  name  and  on 
behalf  of  such  incapable  person;  and  all  acts  done  by  such  sub- 
stitute shall,  for  the  purposes  of  this  Ordinance,  be  as  effectual 
as  if  done  by  the  person  for  whom  he  is  substituted. 

39.  (a)  There  shall  be  paid,  in  respect  of  applications  and 
registration  and  other  matters  under  this  Ordinance,  such  fees 
as  may  from  time  to  time  be  prescribed  by  the  Governor  in 
Executive  Council. 


CEYLON  159 

Governor  may  make  rules,  &c.,  under  this  Ordinance 
40.     (1)  The   Governor  in  Executive   Council  may  from 
time  to  time  make  such  general  rules,  prescribe  such  forms,  and 
do  such  things  as  he  thinks  expedient,  subject  to  the  provisions 
of  this  Ordinance — 

a)  For  regulating  the  practice  of  registration  under  this 
Ordinance ; 

b)  For  classifying  goods  for  the  purposes  of  trade  marks ; 

c)  For  prescribing  the  fees  payable  in  respect  of  applica- 
tions and  registration  and  other  matters  under  this  Ordinance, 
and  the  mode  of  payment  of  the  same ; 

d)  Generally  for  regulating  all  things  by  this  Ordinance 
placed  under  the  direction  or  control  of  the  Registrar. 

(2)  Any  rules  made  in  pursuance  of  this  section  shall  be 
published  in  the  Government  Gazette,  and  it  shall  be  lawful  for 
the  Governor  in  Executive  Council,  by  Proclamation  to  be  pub- 
lished in  the  Government  Gazette,  to  alter,  amend,  or  revoke 
any  such  rules. 

International  arrangements  for  protection  of  trade  marks 

41a.  If  His  Majesty  is  pleased  by  Order  in  Council  to 
apply  the  provisions  of  section  103  of  "the  Patent,  Designs, 
and  Trade  Marks  Act,  1883,"*  to  Ceylon,  then  any  person  who 
has  applied  for  protection  for  any  trade  mark  in  the  United 
Kingdom  or  in  any  foreign  state  with  the  Government  of  which 
His  Majesty  has  made  an  arrangement  under  the  said  section 
for  the  mutual  protection  of  trade  marks  shall  be  entitled  to 
registration  of  his  trade  mark  under  this  Ordinance  in  priority 
to  other  applicants;  and  such  registration  shall  have  the  same 
date  as  the  application  in  the  United  Kingdom  or  such  foreign 
state,  as  the  case  may  be. 

(2)  Such  application  shall  be  made  within  four  months 
from  such  person  applying  for  protection  in  the  United  King- 
dom or  in  the  foreign  state  with  which  the  arrangement  is  in 
force. 

(3)  Nothing  in  this  section  contained  shall  entitle  the  pro- 
prietor of  a  trade  mark  to  recover  damages  for  infringements 
happening  prior  to  the  date  of  the  actual  registration  of  his 
trade  mark  in  this  colony. 

(4)  The  use  in  Ceylon  of  a  trade  mark  during  the  period 
aforesaid  shall  not  invalidate  the  registration  of  the  trade  mark. 

(5)  The  application  for  the  registration  of  a  trade  mark 
under  this  section  shall  be  made  in  the  same  manner  as  an 
ordinary  application  under  this  Ordinance,  but  any  trade  mark 

*  Section  91  of  British  "Patents  and  Designs  Act,  1907"  (which  see),  is  sub- 
stantially  the  same  as  Section  103  of  the  Act  of  1883  (repealed). 


160  CEYLON 

the  registration  of  which  has  been  duly  applied  for  in  the  coun- 
try of  origin  may  be  registered  under  this  Ordinance. 

(6)  The  provisions  of  tkis  section  shall  apply  only  in  the 
case  of  those  foreign  states  with  respect  to  which  His  Majesty 
by  Order  in  Council  shall  have  declared  the  provisions  of  the 
aforesaid  section  103  of  the  above  recited  Imperial  Act  to  be 
applicable,  and  so  long  only,  in  the  case  of  each  state,  as  such 
Order  continues  in  force  with  respect  to  that  state. 

Provision  for  intercolonial  arrangements 
41b.  Whenever  it  appears  to  the  Governor  in  Executive 
Council  that  the  Legislature  of  any  British  Possession  has  made 
satisfactory  provision  for  the  protection  in  such  possession  of 
trade  marks  registered  in  Ceylon,  the  Governor  in  Executive 
Council  may  by  Proclamation  apply  all  or  any  of  the  provisions 
of  the  last  preceding  section  relating  to  the  protection  of  trade 
marks  registered  in  the  United  Kingdom  with  such  variations 
or  additions  (if  any)  as  to  the  Governor  in  Executive  Council 
shall  seem  fit  to  trade  marks  registered  in  such  British  Pos- 
session. 

(2)  An  Order  in  Council  under  this  section  shall  from  a 
date  to  be  mentioned  in  the  Order  take  effect  as  if  its  provisions 
had  been  contained  in  this  Ordinance,  but  the  Governor  in  Execu- 
tive Council  may  revoke  any  such  order. 

OFFENCES 

Offences.  Falsification  of  entries  in  register 
42.  (1)  If  any  person  makes  or  causes  to  be  made  a  false 
entry  in  the  register  kept  under  this  Ordinance,  or  a  writing 
falsely  purporting  to  be  a  copy  of  an  entry  in  any  such  register, 
or  produces,  or  tenders,  or  causes  to  be  produced  or  tendered 
in  evidence  any  such  writing,  knowing  the  entry  or  writing  to 
be  false,  he  shall  be  guilty  of  an  offence,  and  punished  with 
simple  or  rigorous  imprisonment  for  a  term  not  exceeding  seven 
years. 

Falsely  describing  trade  mark  as  registered 
(2)  Any  person  who  describes  any  trade  mark  applied  to 
any  article  sold  by  him  as  registered,  which  is  not  so,  shall  be 
guilty  of  an  offence,  and  liable  on  conviction  to  a  fine  not  ex- 
ceeding fifty  rupees.  A  person  shall  be  deemed,  for  the  pur- 
poses of  this  section,  to  describe  that  a  trade  mark  is  registered 
if  he  sells  the  article  with  the  word  " registered"  or  any  word 
or  words  expressing  or  implying  that  registration  has  been  ob- 
tained for  the  article  stamped,  engraved,  or  impressed  on,  or 
otherwise  applied  to,  the  article. 


CEYLON  161 

Unauthorised  assumption  of  royal  arms 
(3)  Any  person  who,  without  the  authority  of  Her  Majesty, 
or  any  of  the  Royal  Family,  or  of  any  Government  Department, 
assumes  or  uses  in  connection  with  any  trade,  business,  calling, 
or  profession  the  Royal  Arms  or  arms  so  nearly  resembling  the 
same  as  to  be  calculated  to  deceive,  in  such  a  manner  as  to  be 
calculated  to  lead  other  persons  to  believe  that  he  is  carrying  on 
his  trade,  business,  calling,  or  profession  by  or  under  such 
authority  as  aforesaid,  shall  be  guilty  of  an  offence,  and  liable 
on  conviction  to  a  fine  not  exceeding  one  hundred  rupees. 

Offences  non-cognizable  and  bailable 

43.  All  offences  under  this  Ordinance  are  hereby  declared 
to  be  "non-cognizable"  and  "bailable,"  within  the  meaning  of 
those  terms  as  defined  in  section  3  of  "The  Criminal  Procedure 
Code,  1883." 


CHANNEL  ISLANDS 

(GUERNSEY  —  JERSEY) 

No  trade  mark  law. 

Trade  Marks  are  recorded  on  application  being  made  on 
motion  to  the  Royal  Court  of  Justice. 


CHILE 

LAW  OF  NOVEMBER  12,  1874 

ARTICLE  1.  There  shall  be  opened  a  Register  for  inscribing 
marks  of  manufacture  or  of  commerce,  national  or  foreign. 

ART.  2.  There  shall  be  designated  under  the  name  of  marks 
of  manufacture  those  that  are  affixed  to  objects  produced  or 
manufactured  in  Chile  or  abroad  by  industrials  or  agrarians, 
and  under  the  name  of  commercial  marks  those  that  a  merchant 
shall  adopt  for  placing  upon  the  objects  that  he  shall  sell. 

ART.  3.  There  shall  be  considered  as  marks  or  labels  of 
manufacture  or  of  commerce  proper  names,  the  emblems,  and 
any  other  sign,  that  a  manufacturer  or  merchant  shall  adopt 
for  distinguishing  the  objects  that  he  manufactures  or  sells. 

However,  labels  of  manufacture  shall  bear  for  legal  effects 
the  inscription  "Marca  de  Fabrica"  (mark  of  manufacture), 
or  simply  the  initials  "M.  de  F.,"  and  marks  or  labels  of  com- 
merce, the  inscription  "Marca  Comercial"  (commercial  mark), 
or  even  the  initials  "M.  C." 

ART.  4.  The  name  of  a  rural  estate,  mill,  foundry,  factory, 
shall  be  of  the  exclusive  use  of  the  owner  of  the  estate,  mill, 
foundry  or  factory. 

ART.  5.  He  who  shall  inscribe  in  the  Register  a  mark  of 
manufacture  or  of  commerce  shall  have  the  exclusive  ownership 
thereof. 

ART.  6.  The  transfer  that  shall  be  made  of  a  mark  or  the 
permission  that  is  granted  in  order  that  another  may  make  use 
thereof  shall  be  entered  in  the  Register,  subject  to  notification 
to  the  public,  by  means  of  advertisements  for  ten  days. 

ART.  7.  The  registration  of  marks  of  manufacture  or  of 
commerce  must  be  renewed  every  ten  years,  and,  in  case  of  the 
new  registration  not  being  effected,  it  shall  be  deemed  as  aban- 
doned. 

ART.  8.  The  Register  to  which  Art.  1  refers  shall  be  opened 
in  the  Office  of  the  National  Society  of  Agriculture,  under  the 
direction  of  the  President  thereof  or  of  a  delegate  named  by 
the  Council.  In  this  latter  case  the  nomination  of  the  delegate 
must  be  made  from  one  of  the  members  of  the  Directive  Council 
of  said  Society. 

ART.  9.  The  entry  in  the  Register  shall  contain  the  day 
and  the  hour  on  which  the  registration  was  made;  the  name  of 
the  owner,  his  profession  and  domicile;  the  place  in  which  the 


164  CHILE 

factory  is  located ;  the  class  of  industry  or  commerce  for  which 
the  mark  is  intended  to  serve,  as,  likewise,  a  facsimile  thereof. 
There  shall  be  added,  in  addition,  to  the  inscription  the  serial 
number  that  corresponds  to  the  mark  deposited  and  also  other 
indications  that  may  be  deemed  necessary.  The  entry  in  the 
Register,  as  well  as  the  copy  that  shall  be  delivered  to  the  in- 
terested party,  shall  be  signed  by  the  President  of  the  National 
Society  of  Agriculture,  or  his  delegate,  by  the  party  interested, 
and  two  witnesses. 

ART.  10.  There  shall  be  paid  as  fee  to  the  National  Society 
of  Agriculture  twelve  pesos  for  the  registration  of  a  mark  of 
manufacture,  three  pesos  for  that  of  commerce,  and  one  peso 
for  the  copy  authorized  for  either. 

ART.  11.  He  that  shall  falsify,  simulate,  or  fraudulently 
use,  the  marks  or  labels  of  which  the  present  law  makes  mention 
shall  suffer  the  penalties  that  the  Penal  Code  shall  designate. 

ART.  12.  Objects  bearing  counterfeit  marks  shall  be  con- 
fiscated to  the  benefit  of  the  injured  party.  The  instruments  of 
falsification  shall  be  destroyed. 

ART.  13.  Every  year,  in  the  month  of  August,  there  shall 
be  published  in  the  official  periodical  a  list  of  the  marks  that 
shall  have  been  registered. 


LAW  OF  OCTOBER  24,  1898 

SOLE  ARTICLE.  In  the  proceedings  instituted  to  enforce  the 
responsibility  established  by  Art.  11  of  the  Law  of  November 
12, 1874,  the  Tribunals  shall  decide  upon  moral  evidence  accord- 
ing to  their  conscience  whether  the  counterfeiting,  adulteration 
or  fraudulent  use  of  the  trade  mark  has  or  has  not  been  com- 
mitted, even  though  it  appears  prima  facie  that  the  registered 
mark  and  the  one  which  gave  occasion  to  the  proceedings  are 
different. 


CHINA 

China  has  no  trade  mark  law.  A  measure  of  protection  is 
nevertheless  obtainable. 

In  pursuance  of  the  United  States-China  Treaty  for  the 
extension  of  commercial  relations  between  the  two  countries, 
ratified  at  Washington  January  13,  1904,  China  promulgated  in 
October  of  the  same  year  a  trade  mark  law  which  was  found 
to  be  unsatisfactory,  and  almost  immediately  withdrawn.  Up 
to  the  present  no  further  law  has  been  enacted. 

Provision  was  made,  however,  for  the  deposit  of  trade 
marks,  pending  the  enactment  of  a  law,  with  the  Chinese  Mari- 
time Customs  at  Shanghai  and  Tientsin  as  Branch  Offices  of 
the  Trade  Mark  Department  of  the  Board  of  Agriculture  and 
Commerce.  The  Branch  Offices  receive,  through  the  respective 
Consulates  of  the  applicants,  applications  for  provisional  regis- 
tration, assigning  to  each  application  received  a  particular  num- 
ber and  date  of  its  deposit.  Deposit,  by  number  and  date,  is  also 
made  in  the  office  of  the  Consulate. 

The  registration  above  outlined,  it  should  be  noted,  is  effec- 
tive as  claim  to  exclusive  rights  in  a  mark  only  as  against 
Chinese  citizens  in  view  of  the  fact  that,  as  the  principle  of 
extraterritoriality  exists  in  China,  every  foreign  citizen  or  sub- 
ject is  amenable  only  to  the  laws  of  his  own  country.  Protection 
of  trade  marks  against  infringement  by  foreigners,  therefore, 
depends  upon  agreements  between  the  several  nations.  The 
United  States  is  in  agreement  with  Japan  by  treaty  and  with 
Great  Britain,  Germany,  France,  Belgium,  Denmark,  Sweden, 
Holland,  and  Italy  by  exchange  of  notes.  So  much  of  the  United 
States-China  Treaty  of  1904  as  relates  to  the  protection  of  trade 
marks  is  printed  in  this  work,  as  is  also  the  United  States-Japan 
Treaty  of  1908. 


CHINA-UNITED  STATES  TREATY 

RATIFICATIONS  EXCHANGED  AT  WASHINGTON,  JANUARY  13,  1904; 
PROCLAIMED,  JANUARY  13,  1904 


ART.  IX.  Whereas  the  United  States  undertakes  to  pro- 
tect the  citizens  of  any  country  in  the  exclusive  use  within  the 
United  States  of  any  lawful  trade  marks,  provided  that  such 


166  CHINA 

country  agrees  by  treaty  or  convention  to  give  like  protection  to 
citizens  of  the  United  States : — 

Therefore  the  Government  of  China,  in  order  to  secure  such 
protection  in  the  United  States  for  its  subjects,  now  agrees  to 
fully  protect  any  citizen,  firm  or  corporation  of  the  United 
States  in  the  exclusive  use  in  the  Empire  of  China  of  any  lawful 
trade  mark  to  the  exclusive  use  of  which  in  the  United  States 
they  are  entitled,  or  which  they  have  adopted  and  used,  or  intend 
to  adopt  and  use  as  soon  as  registered,  for  exclusive  use  within 
the  Empire  of  China.  To  this  end  the  Chinese  Government 
agrees  to  issue  by  its  proper  authorities  proclamations,  having 
the  force  of  law,  forbidding  all  subjects  of  China  from  infring- 
ing on,  imitating,  colorably  imitating,  or  knowingly  passing  off 
an  imitation  of  trade  marks  belonging  to  citizens  of  the  United 
States,  which  shall  have  been  registered  by  the  proper  authori- 
ties of  the  United  States  at  such  offices  as  the  Chinese  Govern- 
ment will  establish  for  such  purpose,  on  payment  of  a  reason- 
able fee,  after  due  investigation  by  the  Chinese  authorities,  and 
in  compliance  with  reasonable  regulations. 


JAPAN-UNITED  STATES  TREATY 

RATIFICATION  EXCHANGED  AT  TOKIO,  AUGUST  6, 1908 ;  PROCLAIMED, 

AUGUST  11,  1908 

ARTICLE  I.  ...  trade  marks  duly  .  .  .  registered  by  citi- 
zens or  subjects  of  one  High  Contracting  Party  in  the  appro- 
priate office  of  the  other  Contracting  Party  shall  have  in  all 
parts  of  China  the  same  protection  against  infringement  by 
citizens  or  subjects  of  such  other  Contracting  Party  as  in  the 
dominions  and  possessions  of  such  other  Contracting  Party. 

ART.  II. 

ART.  III.  In  case  of  infringement  in  China  by  a  citizen  or 
subject  of  one  of  the  two  High  Contracting  Parties  of  any  .  .  . 
trade  mark  .  .  .  entitled  to  protection  in  virtue  of  this  conven- 
tion the  aggrieved  party  shall  have  in  the  competent  territorial 
or  consular  courts  of  such  Contracting  Party  the  same  rights 
and  remedies  as  citizens  or  subjects  of  such  Contracting  Party. 

ART.  IV.  Each  High  Contracting  Party  engages  to  extend 
to  the  citizens  or  subjects  of  the  other  Contracting  Party  the 
same  treatment  in  China  in  the  matter  of  protection  of  their 
commercial  names  as  they  enjoy  in  the  dominions  and  posses- 
sions of  such  Contracting  Party  under  the  convention  for  the 
protection  of  industrial  property  signed  at  Paris  March  20, 


.    CHINA  167 

1883.     "Hong"  marks  shall  be  considered  to  be  commercial 
names  for  the  purpose  of  this  convention. 

ART.  V.  Citizens  of  possessions  belonging  to  the  United 
States  and  subjects  of  Korea  shall  have  in  China  the  same  treat- 
ment under  the  present  convention  as  citizens  of  the  United 
States  and  subjects  of  Japan  respectively. 

ART.  VI.  It  is  mutually  agreed  between  the  High  Con- 
tracting Parties  that  the  present  convention  shall  be  enforced 
so  far  as  applicable  in  any  other  country  in  which  either  Con- 
tracting Party  may  exercise  extraterritorial  jurisdiction. 

All  rights  growing  out  of  the  present  convention  shall  be 
recognized  in  the  insular  and  other  possessions  and  leased  ter- 
ritories of  the  High  Contracting  Parties  and  all  legal  remedies 
provided  for  the  protection  of  such  rights  shall  be  duly  enforced 
by  the  competent  courts. 

ART.  VII.  Any  person  amenable  to  the  provisions  of  this 
convention  who  possesses  at  the  time  the  present  convention 
comes  into  force  merchandise  bearing  an  imitation  of  a  trade 
mark  owned  by  another  person  and  entitled  to  protection  under 
said  convention  shall  remove  or  cancel  such  false  trade  mark 
or  withdraw  such  merchandise  from  market  in  China  within  six 
months  from  the  date  of  the  enforcement  of  this  convention. 
^  ART.  VIII 

ART.  IX.  The  present  convention  shall  be  ratified  and  the 
ratifications  thereof  shall  be  exchanged  at  Tokyo  as  soon  as 
possible.  It  shall  come  into  force  together  with  the  convention 
relative  to  the  protection  of  inventions,  designs,  trade  marks 
and  copyrights  in  Korea,  ten  days  after  such  exchange  of  rati- 
fications. 


COLOMBIA 

LAW  [NO.  110]  OF  DECEMBER  10,  1914 
SECTION  1 

MARKS  OF  MANUFACTURE,  COMMERCE,  AND  AGRICULTURE 
Preliminaries 

ARTICLE  1.  Every  natural  or  legal  person,  of  Colombian 
or  foreign  nationality,  has  the  right  to  distinguish  his  wares, 
manufactured,  commercial,  or  agricultural,  by  means  of  marks, 
and  to  register  these  in  conformity  with  the  present  law. 

ART.  2.  Marks  are  domestic  or  foreign :  those  that  are  first 
deposited  or  registered  in  Colombia  are  domestic.  Those  that, 
having  been  previously  registered  in  another  country,  are  later 
registered  in  Colombia  are  foreign. 

Foreign  marks  shall  enjoy,  through  registration,  the  same 
rights  as  the  domestic,  if,  in  the  country  where  the  article  was 
produced  or  manufactured,  Colombian  marks  enjoy  the  same 
protection,  save  stipulation  in  public  treaties. 

ART,,  3.     There  may  be  used  as  marks : 

The  designations  of  objects  and  the  names  of  persons,  pro- 
vided they  are  invested  with  a  special  form;  emblems,  mono- 
grams, coats  of  arms,  cuts,  stamped  designs,  vignettes,  seals, 
crests,  reliefs,  borders,  figures,  fancy  or  arbitrary  names ;  num- 
bers, letters,  words,  and  phrases,  when  they  are  invested  with  a 
special  form;  wrappers,  packages,  or  containers  of  the  objects, 
and  any  other  features  that  serve  to  distinguish  the  manufac- 
tures of  a  factory ;  the  products  of  the  agricultural  or  extractive 
industries,  or  articles  of  commerce. 

ART.  4.  There  shall  not  be  considered  as  marks,  and,  con- 
sequently, shall  not  be  registered : 

Letters,  words,  names  or  attributes  that  the  entities  of 
government  use;  the  arms  and  emblems  of  the  same  entities; 
either  the  form  or  the  color  that  is  given  to  articles  by  the  manu- 
facturer ;  the  names  or  phrases  that  may  have  passed  into  com- 
mon use,  and  features  that  do  not  present  characteristics  of 
specialty  or  novelty;  designations  commonly  employed  to  indi- 
cate the  nature  of  the  products  or  the  class  to  which  they  belong ; 
designs  or  expressions  contrary  to  public  morals;  the  name  of 
a  natural  or  legal  person,  if  it  be  not  presented  in  a  particular 
and  distinctive  form. 

The  names  and  coats  of  arms  of  entities  and  the  portraits 
of  persons  shall  not  be  used  as  marks,  nor  shall  be  registered, 


COLOMBIA  169 

without  their  consent  or  that  of  their  heirs. 

Neither  shall  there  be  used  or  registered  a  mark  already 
registered  or  used  by  another,  if  it  be  intended  for  articles 
of  the  same  nature  as  those  evidenced  by  the  mark  already  regis- 
tered, since  it  may  be  presumed  that  it  tends  to  imitate  the  mark 
already  registered. 

There  shall  neither  be  used  nor  registered  as  a  mark  of 
commerce  or  agriculture,  a  mark  already  registered  as  a  mark 
of  manufacture,  nor  vice  versa. 

Neither  shall  there  be  used  or  registered  as  a  mark  of  com- 
merce or  of  agriculture  a  mark  similar  to  another  already  regis- 
tered or  used  as  a  mark  of  manufacturer,  nor  vice  versa. 

The  names  of  localities  of  private  domain  may  be  used  as 
marks  only  by  the  proprietors  of  said  localities,  unless  these 
names  may  have  entered  into  general  use,  or  sufficiently  clear 
descriptions  be  adopted  to  avoid  confusion. 

Geographical  names,  when  they  constitute  an  essential  part 
of  the  mark,  ensigns,  pennants,  arms,  special,  commercial  or 
maritime  insignia  of  nations,  may  only  be  used  to  indicate  the 
origin  of  an  article  or  of  a  product. 

SECTION  2 

« 

OWNERSHIP  AND  USB  OF  MARKS 

ART.  5.  Marks  give  to  their  owners  the  exclusive  right  to 
use  them,  under  the  conditions  that  will  be  explained  hereafter. 
This  right  will  be  justified  by  means  of  certificates  issued  by 
the  Executive  Branch  of  the  Republic  under  the  name  of  Regis- 
ter of  Marks,  and  in  the  form  that  this  law  prescribes. 

ART.  6.  He  is  the  exclusive  owner  of  a  mark  that  has  first 
made  use  of  it  to  distinguish  his  articles  or  products,  but  the 
mark  shall  not  enjoy  the  rights  and  guaranties  that  'this  law 
confers  if  it  be  not  registered  with  all  the  formalities  therein 
indicated. 

ART.  7.  The  ownership  of  a  mark  consists  in  the  right  to 
use  it  exclusively  on  the  articles  and  products  for  which  it  is 
intended,  and  on  others  of  the  same  nature,  by  the  same  manu- 
facturer, merchant,  or  producer ;  in  the  right  to  oppose  the  use 
and  registration  of  any  other  that  may  create,  directly  or.  in- 
directly, confusion  concerning  the  articles  or  products  guaran- 
teed by  it ;  and  in  the  right  to  assign  or  transfer  its  use  to  other 
persons. 

ART.  8.  The  mark  shall  necessarily  be  used  on  the  article 
or  product  for  which  it  is  intended.  If  it  be  not  used  within 
two  years,  counted  from  the  date  of  the  registration,  or  if  it 
cease  to  be  used  for  one  continuous  year,  the  right  shall  lapse. 


170  COLOMBIA 

But,  if  the  mark  be  foreign,  the  immediate  importation  of  the 
article  into  the  national  territory  is  not  necessary,  and  it  shall 
not  lapse  if  it  be  used  on  the  article  or  product  for  which  it  is 
intended  outside  the  Republic  within  the  term  specified. 

ART.  9.  The  mark  may  be  affixed  to  the  manufactures  or 
products ;  to  the  containers,  packages,  catalogues,  prospectuses, 
etc.,  and  may  be  used  in  different  sizes. 

ART.  10.  If  a  mark  of  manufacture  be  not  deposited  and 
registered,  no  right  of  ownership  is  presumed  against  third 
parties. 

SECTION  3 

REGISTRATION  OF  MARKS 

ART.  11.  Any  person,  natural  or  legal,  of  Colombian  or 
foreign  nationality,  owner  of  a  mark,  may  acquire  the  exclusive 
right  to  use  it  throughout  the  Republic,  by  virtue  of  the  for- 
mality of  registration  or  inscription  in  the  respective  Ministry, 
for  which  the  party  interested  shall  address  the  Ministry  in 
person  or  through  an  attorney  in  an  application  for  registration. 

The  application  shall  be  made  on  stamped  paper,  and  there 
shall  be  mentioned  therein  the  name  and  domicile  of  the  owner 
of  the  mark;  the  name  and  domicile  of  the  attorney,  when  the 
request  is  made  by  proxy;  a  detailed  statement  or  description 
of  the  mark  in  the  Spanish  language,  specifying  with  all  dis- 
tinctness the  essential  part  of  the  mark  or  its  principal  distinc- 
tive feature;  the  manufactures,  products,  or  objects  for  which 
the  mark  is  intended;  the  nationality  of  the  mark,  in  case  it 
may  have  been  already  registered  or  deposited  in  another  coun- 
try, and  the  country  and  the  city  or  place  from  which  the  arti- 
cles or  products  originate  on  which  the  mark  is  going  to  be  used 
or  is  being  used. 

With  the  application  there  shall  be  included : 

(1)  The  power  of  attorney  if  the  application  is  made 
through  intermediary  of  an  attorney; 

(2)  Three  examples,  at  least,  of  the  mark  that  is  to  be 
registered;  each  one  of  the  sheets  of  these  examples  shall  bear 
a  national  stamp  of  the  value  of  ten  centavos ; 

(3)  A  small  cut  (cliche)  of  wood  or  metal  that  may  be  used 
in  the  official  .journal,  of  the  depth  of  the  type  that  is  used  in 
printing  and  that  shall  not  be  more  than  twelve  centimetres  in 
width.    When  the  mark  consists  of  a  strip  of  a  length  greater 
than  twelve  centimetres,  or  of  a  collection  of  symbols,  this  strip 
and  the  symbols  may  be  divided  into  various  parts  that  shall 
be  reproduced  in  another  cliche  or  cliches  of  the  same  dimen- 
sions, that  shall  be  printed  in  rotation,  or  be  reduced,  diminished 


COLOMBIA  171 

proportionately,  into  a  single  cliche; 

(4)  The  consent  in  writing  of  the  person,  when  his  name 
or  portrait  or  the  facsimile  of  his  signature  constitutes  the  mark 
or  the  distinctive  feature  of  the  mark  that  it  is  desired  to  regis- 
ter in  the  name  of  another  person ;  this  consent  shall  be  written 
on  stamped  paper,  or  on  common  paper,  with  a  stamp  of  ten 
centavos;  and 

(5)  The  receipt  of  the  General  Treasury  of  the  Republic 
in  which  it  is  evidenced  that  the  fees  prescribed  by  law  have 
been  paid. 

ART.  12.  The  application  being  presented,  the  Registry 
Clerk  of  the  Ministry  shall  enter  at  its  bottom  and  in  the  cor- 
responding registry  book  a  memorandum  in  which  is  shown  the 
day  and  the  hour  of  the  presentation  of  the  application,  and 
the  number  of  folios  in  it.  Said  memorandum  shall  be  signed 
by  the  Registry  Clerk  and  the  party  interested. 

ART.  13.  If  the  application  be  in  accord  with  the  article, 
the  Minister,  whom  the  Secretary  shall  inform  concerning  the 
particulars  by  writing  at  the  bottom  of  the  application,  shall 
order  that  this  and  the  cliche  shall  be  published  in  the  Diario 
Oficial  three  times,  and  at  the  cost  of  the  party  interested,  and, 
on  the  expiry  of  sixty  days,  counted  from  that  following  the  one 
of  the  last  publication,  and  provided  there  may  not  have  been 
entered  legal  opposition  against  the  registration,  shall  decide 
that  this  be  recorded  in  the  corresponding  book. 

PARAGRAPH.  If  the  application  be  not  in  legal  form,  the 
Minister  shall  order  that  it  be  returned  to  the  party  interested 
in  order  that  he  make  the  corrections  in  the  matter,  or  that  he 
include  the  pieces  that  are  lacking  of  those  required  by  law. 

ART.  14.  If  any  one  shall  allege  that  the  mark  that  it  is 
desired  to  register,  or  that  is  already  registered  belongs  to  him 
on  the  ground  of  having  been  the  first  that  has  publicly  and 
conspicuously  used  it  within  the  past  five  (5)  years,  he  may 
oppose  its  registration  or  request  that  the  registration  be  can- 
celled, if  the  mark  should  already  be  registered.  The  Minister, 
in  these  cases,  shall  send  the  application  of  the  opponent  and 
the  minutes  of  the  affair  to  the  division  of  Judges  of  the  Cir- 
cuit of  Bogota  in  order  that  the  matter  of  opposition  be  decided 
in  a  summary  judgment.  The  term  for  evidence  for  the  sum- 
mary judgment  may  be  extended  up  to  ten  days  longer  than 
that  indicated  in  the  Judicial  Code  for  these  decisions,  provided 
one  of  the  parties  requests  it. 

Appeals  in  these  decisions  shall  be  made  before  the  Superior 
Tribunal,  in  agreement  with  the  general  rules. 

PARAGRAPH.    This  same  procedure  shall  be  followed  in  cases 


.172  COLOMBIA 

of  opposition  to  the  registry  of  a  mark  that,  according  to  the 
terms  of  the  present  law,  may  be  a  falsification  or  imitation  of 
another  already  registered. 

ART.  15.  The  sentence  rendered  in  decisions  concerning 
opposition  or  application  for  cancellation  of  registration  having 
been  announced,  an  extract  from  it  shall  be  published  in  the 
Diario  Oficial,  at  the  cost  of  the  successful  party,  and  the  Judge 
shall  return  to  the  Ministry  the  original  record  for  its  cor- 
responding execution. 

ART.  16.  "When  the  sentence  that  is  rendered  in  these  sum- 
mary judgments  is  in  favor  of  the  party  that  opposes  the  regis- 
tration of  the  mark,  continuance  shall  not  be  given  to  the  appli- 
cation for  registration,  if  it  concerns  a  mark  already  registered. 
In  this  sentence  there  shall  be  imposed  on  the  losing  party  the 
payment  of  the  judicial  costs. 

ART.  17.  In  cases  in  which  there  be  no  opposition  to  the 
registration  of  the  mark,  or  in  which  the  right  of  the  opposition 
may  be  rejected  by  the  Judge,  the  registration  shall  be  carried 
out  and  there  shall  be  forwarded  to  the  party  interested  a  cer- 
tificate of  registration,  a  certificate  that  shall  establish  the  legal 
title  to  ownership  of  the  mark,  and  that  shall  be  published  once 
in  the  Diario  Oficial. 

This  certificate  shall  be  drawn  up  on  stamped  paper,  and 
shall  bear  the  signature  of  the  Minister  and  the  seal  of  the 
Ministry  and  the  annotation  of  the  Chief  of  the  corresponding 
Section  as  having  entered  the  certificate  in  the  corresponding 
book  of  marks. 

ART.  18.  In  the  same  Resolution  in  which  the  Ministry 
shall  order  the  registration  of  a  mark,  it  shall  direct  that  the 
records  be  filed  and  that  there  be  sent  to  the  party  interested 
the  copies  that  he  may  request.  One  of  the  examples  of  the 
mark,  duly  annotated,  shall  be  returned  to  the  applicant  in  order 
that  he  may  attach  it  to  the  certificate  of  registration. 

ART.  19.  The  Resolution  concerning  the  registration  of  a 
mark  shall  be  transcribed  verbatim  in  a  book  for  the  registry  of 
marks,  with  indication  of  the  date,  and  the  Secretary  of  the 
Ministry  shall  certify  at  the  bottom  that  it  is  the  authentic  copy 
of  the  Resolution  directed  by  the  Minister,  and  shall  indicate 
the  number  of  the  record  in  which  appear  the  original  pro- 
ceedings. 

ART.  20.  The  registration  of  a  mark  holds  valid  for  only 
twenty  years,  which  expired,  it  shall  lapse  if  renewal  be  not 
opportunely  requested.  Each  renewal  shall  last  for  twenty  (20) 
years.  Every  registration  may  be  renewed  before  it  lapses  and 
provided  that  the  fees  prescribed  in  this  law  for  the  renewal  have 


COLOMBIA  173 

been  paid.  The  corresponding  receipt  of  the  fees  having  been 
paid  into  the  General  Treasury  of  the  Republic  being  presented, 
there  shall  be  noted,  in  the  book  for  registration,  and  at  the 
bottom  of  each  registration  the  renewal  of  the  mark,  and  there 
shall  be  given  to  the  party  interested  a  certificate  of  renewal. 

ART.  21.  The  effects  of  the  registration  shall  retroact  to 
the  date  on  which  it  was  applied  for. 

ART.  22.    Every  mark  may  be  inherited  and  be  assigned. 

ART.  23.  A  mark  may  be  transferred  only  with  the  indus- 
try to  which  the  article  for  which  it  is  intended  belongs,  and  the 
sale  of  the  industry  shall  include  necessarily  the  assignment  of 
the  mark,  save  stipulation  to  the  contrary.  Every  assignment 
of  a  mark  shall  be  entered  in  the  books  for  registrations,  and, 
if  the  annotation  be  not  made,  the  assignment  of  the  mark  will 
have  no  validity. 

ART.  24.  The  registration  of  marks  shall  be  made  without 
prior  examination,  that  is  to  say,  without  ascertaining  the  utility 
of  the  object  and  the  character  and  qualities  or  properties  of 
the  products  for  which  they  are  intended,  on  the  sole  respon- 
sibility of  the  party  interested,  and  leaving  in  every  case  with- 
out prejudice  the  rights  of  third  parties. 

ART.  25.  If  the  process  for  making  a  mark  be  a  secret, 
and  the  party  interested  should  wish,  to  keep  it  in  reserve,  he 
shall  so  state  it  in  his  application,  and  shall  describe  the  process 
in  a  sealed  sheet,  a  sheet  that  shall  be  opened  only  in  case  of 
litigation. 

ART.  26.  The  allowance  of  a  registration  for  marks  shall 
incur,  in  favor  of  the  Public  Treasury,  a  fee  of  fifteen  pesos, 
gold,  for  each  mark,  a  fee  that  the  party  interested  shall  deposit 
previously  in  the  General  Treasury  of  the  Republic,  on  making 
the  application  for  registration. 

PARAGRAPH.  When  the  registration  of  a  mark  is  rejected 
by  the  Ministry  by  virtue  of  the  sentence  decreed  in  summary 
judgment,  in  cases  of  opposition  to  the  registry  of  said  mark, 
the  applicant  for  registration  shall  forfeit  in  favor  of  the  Na- 
tional Treasury  half  of  the  fees  deposited  in  the  Treasury. 

ART.  27.  The  renewal  of  registration  of  a  mark  shall  incur 
a  fee  of  thirty  ($30)  pesos,  gold,  and  the  certificate  of  the  fact 
that  a  mark  has  been  assigned,  a  fee  of  ten  ($10)  pesos,  gold. 

ART.  28.  The  powers  conferred  abroad  to  solicit  the  regis- 
tration of  marks,  or  patents  of  invention,  shall  be  authenticated 
by  the  respective  Minister  or  Consular  Agent  of  the  Republic  in 
the  place  where  they  are  executed,  or  by  the  Minister  or  Con- 
sular Agent  of  a  friendly  nation,  in  case  Colombia  may  not  have 


174  COLOMBIA 

accredited  such  officials  in  the  country  where  the  constituent 
resides. 

SECTION  4 

PENALTIES 

ART.  29.  Those  shall  be  punished  with  a  fine  of  from  fifty 
to  five  hundred  ($50  to  $500)  pesos,  and  imprisonment  of  from 
three  (3)  months  to  one  (1)  year: 

(1)  That  falsify  or  imitate  an  original  mark; 

(2)  That  sell  or  offer  for  sale,  buy  or  maintain,  imitated 
or  falsified  marks ; 

(3)  That  sell  or  offer  for  sale,  or  buy,  original  marks  with- 
out the  consent  of  the  owner,  which  is  presumed  when  there  be 
a  protest  on  the  part  of  the  latter; 

(4)  Those  that  affix  to  articles  that  they  manufacture  or 
produce,  or  to  objects  with  which  they  trade,  a  mark  legally 
registered  in  favor  of  another  person,  without  the  consent  of 
the  owner,  which  is  presumed  when  there  be  protest  on  the  part 
of  this  latter ; 

(5)  Those  that  knowingly  buy,  sell  or  offer  for  sale  articles, 
products  or  merchandise  that  bear  the  imitated  or  falsified  mark, 
which  is  presumed  if  it  be  found  on  said  articles,  products,  or 
merchandise  in  their  establishments,  stores,  or  warehouses; 

(6)  Those  that  use  on  their  articles,  products  or  merchan- 
dise, marks  that  contain  false  indications  concerning  the  nature, 
quantity,  quality,  source  and  origin;  or  that  falsely  claim  that 
they  have  been  rewarded  with  titles,  medals,  diplomas  or  other 
distinctions,  in  expositions,  competitions,  etc.,  or  that  indicate 
that  the  marks  have  been  legally  registered,  such  not  having 
been  the  case; 

(7)  Those  that  affix  to  their  articles,  products  or  merchan- 
dise, a  mark  that,  even  if  it  belong  to  them  and  be  legally  regis- 
tered, resembles  another  mark,  due  to  some  addition,  elimina- 
tion or  modification ; 

(8)  Those  that,  without  imitating  or  falsifying  a  mark,  re- 
move or  separate  it  from  certain  articles  to  affix  it  to  others ; 

(9)  Those  that  refill  with  spurious  products  containers 
bearing  another's  mark;  those  that  refill  with  products  that  do 
not  correspond  with  the  genuineness  as  proclaimed  in  the  mark 
that  the  container  bears ;  those  that  mix  genuine  products  that 
have  original  marks  with  others,  foreign  or  spurious,  and  those 
that  knowingly  keep  or  sell  said  products.    This  last  will  be 
presumed  if  the  said  objects  be  found  in  their  stores,  shops, 
warehouses  or  establishments. 

AST.  30.    He  shall  be  punished  with  a  fine  of  from  twenty 


COLOMBIA  175 

($20)  to  two  hundred  ($200)  pesos,  and  imprisonment  of  from 
one  (1)  to  three  (3)  months: 

(1)  That  makes  use  on  his  articles,  products  or  merchan- 
dise of  a  mark  that,  without  being  totally  falsified  or  imitated, 
by  its  simple  appearance  or  by  its  inscriptions,  combination  of 
colors  or  other  circumstances,  may  lead  the  public  to  error  con- 
cerning the  source,  quality,  quantity,  weight  or  origin  of  said 
articles,  products  or  merchandise ;  and 

(2)  That  knowingly  sells,  offers  for  sale,  or  in  any  manner 
places  in  circulation  articles,  products  or  merchandise  with 
marks  that  have  the  irregularities  regarding  which  mention  is 
made  in  the  preceding  article. 

ART.  31.  In  case  of  a  repetition  of  the  offense  the  penalties 
indicated  in  the  two  preceding  articles  may  be  doubled. 

ART.  32.  Offenders  shall  furthermore  be  condemned  to  the 
payment  of  costs,  losses  and  damages  in  favor  of  the  owner  of 
the  original  marks. 

ART.  33.  Accomplices,  accessories  and  harbourers  shall  be 
punished  in  the  proportion  established  in  the  Penal  Code. 

ART.  34.  All  the  marks  imitated  or  falsified  except  one  that 
shall  be  attached  to  the  record  shall  be  destroyed  in  the  presence 
of  the  Judge  and  two  witnesses;  evidence  of  it  shall  be  left  in 
the  records. 

ART.  35.  The  proceeds  of  the  fines  of  which  mention  is 
made  in  this  law  shall  be  applied  to  the  public  instruction  of  the 
Municipality  wherein  the  offense  may  have  been  committed. 

ART.  36.  Articles,  products  or  merchandise  that  have  fal- 
sified or  imitated  marks,  according  to  the  terms  of  this  law,  shall 
be  sold  at  public  auction,  after  the  marks  have  been  destroyed, 
and  their  proceeds  shall  be  devoted  to  indemnify  those  damaged. 
The  balance,  if  there  be  such,  shall  be  devoted  to  the  public  in- 
struction of  the  place  in  which  the  seizure  was  made. 

ART.  37.  The  original  mark  is  the  one  registered.  The 
spurious  mark  is  one  not  registered,  like  or  similar  to  the  one 
registered. 

There  is  imitation  when  there  exist  between  the  marks  one 
or  more  parts  essentially  similar,  or  when  they  may  be  con- 
founded with  each  other  at  first  view,  and  when  only  upon  care- 
ful examination  it  be  possible  to  distinguish  one  from  the  other. 

SECTION  5 

PROCEDURE 

ART.  38.  Criminal  action  for  violations  mentioned  in  this 
law,  the  same  as  civil  action  for  the  reparation  of  injury  caused 
by  the  violation,  cannot  be  begun  except  by  the  injured  person 


176  COLOMBIA 

or  by  his  heirs  or  his  legal  representative. 

ART.  39.  The  proof  of  the  corpus  delicti  shall  be  estab- 
lished by  experts,  when  they  determine  whether  there  is  imita- 
tion or  falsification. 

ART.  40.  The  accused,  if  any  of  the  presumptions  estab- 
lished in  this  law  be  against  them,  shall  be  detained  preventively, 
but  they  shall  be  permitted  to  give  jail  bond;  being  rather  not 
arrested  or  freed  from  the  detention  to  which  they  may  be  sub- 
jected, but  being  obliged  to  appear  whenever  they  are  called, 
under  penalty  of  being  apprehended  and  arrested  if  they  do 
not  appear,  as  if  they  had  not  given  the  said  bail. 

Articles,  products  or  merchandise  of  the  accused  on  which 
spurious  or  false  marks  may  have  been  used  shall  be  deposited 
with  a  person  of  responsibility  until  the  termination  of  the  pro- 
ceedings. 

ART.  41.  The  Judges  of  the  Circuit  in  which  is  situated 
the  place  where  the  violation  was  committed,  or  of  the  place 
where  the  articles,  products  or  merchandise,  in  respect  to  which 
the  law  was  violated,  may  be  found,  are  competent  to  try  causes 
to  which  infractions  of  this  law  give  occasion. 

ART.  42.  The  procedure  for  criminal  actions  is  that  indi- 
cated by  Art.  270  of  Law  57  of  1887,  and  for  civil,  that  of  the 
ordinary  trial. 

ART.  43.  Judicial  decisions  concerning  marks,  passed  into 
the  record  as  res  adjudicata,  shall  be  forwarded  in  a  legalized 
copy  to  the  respective  Section  of  the  Ministry  for  the  purposes 
to  which  it  may  have  been  adjudged. 

SECTION  6 

NAMES,  TITLES,  INSIGNIA,  ETC. 

ART.  44.  The  name  of  the  merchant  or  producer,  the  firm 
name,  the  name  of  joint  stock  companies,  the  sign  or  commer- 
cial name  of  a  house  or  establishment,  constitute  a  property  for 
the  purposes  of  this  law. 

ART.  45.  He  that  wishes  to  carry  on  an  industry,  business, 
or  line  of  business  already  engaged  in  by  another  person,  with 
the  same  name  or  the  same  commercial  designation,  shall  adopt 
a  modification  that  shall  cause  this  name  or  this  designation  to 
be  visibly  and  clearly  distinct  from  that  that  the  pre-existing 
house  or  establishment  uses,  and  that  avoids  all  confusion  that 
at  a  first  glance  might  be  produced. 

ART.  46.  If  the  party  injured  by  the  use  of  a  name  does 
not  commence  an  action  within  the  term  of  one  (1)  year  from 
the  day  on  which  it  was  first  used  by  another  party,  he  shall 
lose  his  claim  to  any  redress.  This  action  shall  be  brought  by 


COLOMBIA  177 

way  of  an  ordinary  trial,  and  results  in  indemnification  for 
losses  and  damages. 

ART.  47.  Joint  stock  companies  have  a  right  to  the  name 
that  they  bear,  the  same  as  another,  natural,  person,  and  are 
subject  to  the  same  rules  and  limitations  as  regards  the  right 
and  use  of  the  name. 

ART.  48.  The  right  to  the  exclusive  use  of  a  name  as  a 
property  shall  be  extinguished  together  with  the  commercial 
house  or  establishment  that  bears  it,  or  with  the  termination 
of  the  exploitation  of  the  branch  for  which  it  was  intended. 

ART.  49.  The  registration  of  a  name  is  not  necessary  in 
order  to  make  use  of  the  rights  granted  under  this  law. 

ART.  50.  The  insigne  is  an  emblematic  or  nominal  desig- 
nation by  which  the  house  or  establishment  that  possesses  it  is 
distinguished  from  other  commercial  houses  or  establishments. 

PARAGRAPH.  What  is  said  of  the  name  applies  likewise  to 
the  insigne,  and  to  titles  or  signs. 

SECTION  7 

UNFAIR  COMPETITION 

ART.  51.  Unfair  competition  is  an  act  of  bad  faith  that 
has  for  an  object  to  create  confusion  between  the  articles  of 
two  manufacturers  or  of  two  merchants  or  farmers,  or  that, 
without  creating  confusion,  tends  to  discredit  a  rival  establish- 
ment. 

ART.  52.  Acts  of  unfair  competition  give  cause  to  those 
injured  to  request  audience  before  the  common  Judges  for  in- 
demnification for  injuries  against  those  that  have  committed 
them.  This  action  shall  be  brought  in  the  ordinary  manner. 

PARAGRAPH.  The  Judges  in  each  particular  case  shall 
decide,  with  the  intervention  of  experts,  whether  the  action  com- 
plained of  is  or  is  not  one  of  unfair  competition,  and  shall 
authoritatively  determine  the  means  that  may  be  necessary  in 
order  that  said  competition  cease,  and  that  the  confusion  that 
it  creates  between  similar  manufactures  or  products  of  mer- 
chants, manufacturers  or  farmers  may  be  avoided. 

SECTION  8 

FINAL  PROVISIONS 

ART.  53.  The  Ministry  shall  send  to  each  Arministrator 
of  Customs  a  copy  of  the  registrations  of  foreign  marks  that 
may  have  been  registered  and  an  example  of  each  mark. 

ART.  54.  The  registrations  of  marks  made  prior  to  the 
date  of  the  sanction  of  this  law  shall  remain  in  force  for  ten 
years,  counted  from  the  date  of  the  registration,  and  shall  enjoy 


178  COLOMBIA 

the  benefits  prescribed  by  this  law  and  shall  be  subject  to  the 
limitations  of  the  same. 

ART.  55.  This  law  shall  be  translated  into  English,  French, 
German  and  Italian,  and  shall  be  published  in  the  five  languages, 
in  an  edition  sufficient  to  be  distributed  abroad  in  the  public 
offices,  and  in  the  Legations,  Consulates,  and  Agencies  of  the 
Eepublic. 

ART.  56.  Art.  2  of  the  Legislative  Decree,  No.  475,  of  1902, 
and  the  Executive  Decree,  No.  217,  of  1900,  and  all  the  legal  and 
executive  provisions  that  may  be  contrary  to  this  law  are 
repealed. 


COLONY  OF  SEYCHELLES 

ORDINANCE  NO.  23  OF  JULY  11,  1903, 
AS  AMENDED  BY  ORDINANCE  NO.  10  OF  JULY  5,  1919 

Definition  and  application  of  Ordinance 
1.  (1)  For  the  purposes  of  this  Ordinance: 
(i)  The  word  " person"  includes  any  person,  whether  a 
subject  of  His  Majesty  or  not,  and  any  body  corporate  or  body 
of  the  like  nature,  whether  constituted  according  to  the  Law  of 
the  Seychelles  Islands  or  of  any  of  His  Majesty's  Dominions, 
or  according  to  the  Law  of  any  foreign  country,  and  also  any 
company,  association  or  society  of  persons  whether  the  mem- 
bers thereof  be  subjects  of  His  Majesty  and  some  of  them  not, 
and  whether  such  body  corporate,  body  of  the  like  nature,  com- 
pany, association,  or  society  be  established  or  carry  on  business 
within  the  Seychelles  Islands  or  elsewhere,  or  partly  within  the 
Seychelles  Islands  and  partly  elsewhere. 

(ii)  The  word  "mark"  includes  any  name,  signature,  word, 
letter,  device,  emblem,  figure,  sign,  seal,  stamp,  diagram,  label, 
ticket,  or  other  mark  of  any  other  descriptions. 

(iii)  The  expression  "trade  mark"  includes  any  and  every 
such  name,  signature,  word,  letter,  device,  emblem,  figure,  sign, 
seal,  stamp,  diagram,  label,  ticket,  or  other  mark  as  aforesaid 
lawfully  used  by  any  person  to  denote  any  article  of  trade  man- 
ufacture or  merchandise,  to  be  an  article  or  thing  of  the  manu- 
facture, workmanship,  production,  or  merchandise  of  such  per- 
son, or  to  be  an  article  of  any  peculiar  or  particular  description 
made  or  sold  by  such  person. 

The  expression  also  includes  any  trade  mark  which,  either 
with  or  without  registration,  is  protected  by  law  in  any  British 
Possession  or  Foreign  State  to  which  the  provisions  of  the  one 
hundred  and  third  section  of  the  Patents,  Designs  and  Trade 
Marks  Act,  1883,  are,  under  Order  in  Council,  for  the  time  being 
applicable. 

(iv)  The  expression  "trade  description"  means  any  de- 
scription, statement,  or  other  indication,  direct  or  indirect, 

(a)  as  to  the  number,  quantity,  measure,  gauge,  or  weight 
of  any  goods,  or 

(b)  as  to  the  place  or  country  in  which  any  goods  were 
made  or  produced,  or 

(c)  as  to  the  mode  of  manufacturing  or  producing  any 
goods,  or 


180  COLONY  OF  SEYCHELLES 

(d)  as  to  the  material  of  which  any  goods  are  composed,  or 

(e)  as  to  any  goods  being  the  subject  of  an  existing  patent, 
privilege,  or  copyright, 

and  the  use  of  any  figure,  word,  or  mark,  which,  according  to 
the  custom  of  the  trade,  is  commonly  taken  to  be  an  indication 
of  any  of  the  above  matters,  shall  be  deemed  to  be  a  trade 
description  within  the  meaning  of  this  Ordinance. 

(v)  The  expression  "false  trade  description"  means  a 
trade  description  which  is  false  in  a  material  respect  as  regards 
the  goods  to  which  it  is  applied,  and  includes  every  alteration 
of  a  trade  description,  whether  by  way  of  addition,  effacement, 
or  otherwise,  where  that  alteration  makes  the  description  false 
in  a  material  respect,  and  the  fact  that  a  trade  description  is  a 
trade  mark  or  part  of  a  trade  mark  shall  not  prevent  such  trade 
description  being  a  false  description  within  the  meaning  of  this 
Ordinance. 

(vi)  The  expression  "goods"  means  anything  which  is  the 
subject  of  trade,  manufacture,  or  merchandise. 

(vii)  The  expressions  "manufacturer,  dealer,  trader,"  and 
"proprietor"  include  any  body  of  persons  corporate  or  unin- 
corporate. 

(viii)  The  expression  "name"  includes  any  abbreviation 
of  a  name. 

(2)  The  provisions  of  this  Ordinance  respecting  the  appli- 
cation of  a  false  trade  description  to  goods  shall  extend  to  the 
application  to  goods  of  and  such  figures,  words,  or  marks,  or 
arrangement  or  combination  thereof,  whether  including  a  trade 
mark  or  not  as  are  reasonably  calculated  to  lead  persons  to 
believe  that  the  goods  are  the  manufacture  or  merchandise  of 
some  person  other  than  the  person  whose  manufacture  or  mer- 
chandise they  really  are. 

(3)  The  provisions  of  this  Ordinance  respecting  the  appli- 
cation of  a  false  description  to  goods,  or  respecting  goods  to 
which  a  false  trade  description  is  applied,  shall  extend  to  the 
application  to  goods  of  any  false  name  or  initials  of  a  person 
applied,  in  like  manner  as  if  such  name  or  initials  were  a  trade 
description,  and  for  the  purpose  of  this  enactment  the  expres- 
sion "false  name  or  initials"  means,  as  applied  to  any  goods, 
any  name  or  initials  of  a  person  which : 

(a)  are  not  a  trade  mark,  and 

(b)  are  identical  with,  or  a  colourable  imitation  of,  the 
name  or  initials  of  a  person  carrying  on  business  in  connection 
with  goods  of  the  same  description,  and  not  having  authorised 
the  use  of  such  name  or  initials,  and 


COLONY  OF  SEYCHELLES  181 

(c)  are  either  those  of  a  fictitious  person  or  of  some  person 
not  bond  fide  carrying  on  business  in  connection  with  such 
goods. 

All  trade  marks  to  be  registered 

2.  Except  as  otherwise  provided  in  section  1.  (i)  (iii),  no 
mark  shall  have  the  character  of  a  trade  mark  in  the  Seychelles 
Islands,  until  it  has  been  duly  registered  in  manner  as  herein- 
after provided. 

Application  for  registration 

3.  (1)  Every  person,  wishing  to  register  a  trade  mark 
which  he  has  a  right  to  use,  shall,  for  that  purpose,  either  by 
himself  or  by  any  party  authorised  by  him  on  that  behalf,  make 
application  in  writing  to  the  Collector  of  Customs. 

(2)  The  application  shall  state  what  article  of  trade,  man- 
ufacture, or  merchandise,  being  the  manufacture,  workmanship, 
production,  or  merchandise  of  the  applicant,  such  trade  mark 
is  intended  to  denote;  and  it  shall  further  state,  if  necessary, 
to  what  peculiar  or  particular  description  of  such  article  the 
said  trade  mark  is  intended  to  apply.  To  the  said  application 
shall  be  joined  a  facsimile  of  the  trade  mark  to  be  registered. 
Mode  of  registration 

4.  (1)  The  Collector  of  Customs  shall  keep  a  Register  of 
trade  marks  duly  numbered  and  initialed  by  the  Registrar  of 
the  Court  of  Seychelles,  upon  which  he  shall  transcribe  every 
application  made  to  him  as  aforesaid.    He  shall  mention  in  the 
margin  of  the  transcription  the  date  when  he  received  the  appli- 
cation, and  he  shall  give  a  number  to  each  such  application.    He 
shall  make  the  same  mention  and  affix  the  same  number  upon  the 
trade  mark  deposited  with  him,  and  he  shall  file  and  keep  the 
said  trade  mark  in  a  proper  and  convenient  place  in  his  office. 

(2)  He  shall  then  return  to  the  person  who  has  applied  for 
the  registration  of  a  trade  mark  the  written  application  made 
by  such  person,  after  endorsing  thereon  a  certificate  of  registry, 
in  the  form  of  the  Schedule  annexed  to  this  Ordinance. 

(3)  Every  person  who  has  caused  a  trade  mark  to  be  regis- 
tered shall  give  notice  thereof  in  the  Government  Gazette  and 
one  local  newspaper,  if  any,  and  such  notice  shall  contain  a 
summary  description  of  the  trade  mark  and  the  date  of  its 
registration. 

(4)  (Repealed  by  Ordinance  No.  10  of  1919.) 

Registered  trade  marks  presumed  genuine 

(5)  Every  trade  mark  deposited  with  the  Collector  of  Cus- 
toms, and  touching  which  a  certificate  of  registry  has  been  deliv- 


182 

ered  by  the  Collector,  shall,  in  every  Court  in  the  Seychelles 
Islands,  be  presumed  to  be  a  genuine  trade  mark,  unless  proof 
to  the  contrary  be  adduced,  and  it  shall  be,  as  such,  admissible 
in  evidence  in  every  criminal  prosecution  under  this  Ordinance 
as  well  as  in  every  civil  action  which  the  proprietor  of  the  trade 
mark  may  be  entitled  to,  at  law,  in  equity,  or  otherwise. 

Registration  fee 

(6)  A  fee  of  ten  Rupees  shall  be  paid  into  the  hands  of 
the  Collector  of  Customs,  for  each  certificate  of  registry  deliv- 
ered by  him  under  the  provisions  of  this  Ordinance. 

Right  of  search 

7.  (1)  Upon  payment  of  a  fee  of  one  Rupee  it  shall  be 
lawful  for  any  person  to  examine  the  register  of  trade  marks 
kept  by  the  Collector  of  Customs,  as  well  as  the  trade  marks 
filed  in  his  office. 

(2)  The  fees  mentioned  in  this  section  shall  be  paid  into 
the  Treasury  to  the  credit  of  General  Revenue. 

Offences  as  to  trade  marks  and  trade  descriptions 

8.  (1)  Every  person  who: 

(a)  forges  any  trade  marks;  or 

(b)  falsely  applies  to  goods  any  trade  mark  or  any  mark 
so  nearly  resembling  a  trade  mark  as  to  be  calculated  to 
deceive,  or 

(c)  makes  any  die,  block,  machine,  or  other  instrument  for 
the  purpose  of  forging,  or  of  being  used  for  forging,  a  trade 
mark;  or 

(d)  applies  any  false  trade  description  to  goods;  or 

(e)  disposes  of,  or  has  in  his  possession,  any  die,  block, 
machine,  or  other  instrument  for  the  purpose  of  forging  a 
mark;  or 

(f )  causes  any  of  the  things  above  in  this  section  mentioned 
to  be  done,  shall,  subject  to  the  provisions  of  this  Ordinance, 
and  unless  he  proves  that  he  acted  without  intent  to  defraud 
be  guilty  of  an  offence  against  this  Ordinance. 

(2)  Every  person  who  sells,  or  exposes,  or  has  in  his  pos- 
session for  sale,  or  any  purpose  of  trade  or  manufacture,  any 
goods  or  things  to  which  any  forged  trade  mark  or  false  trade 
description  is  applied  or  to  which  any  trade  mark,  or  mark  so 
nearly  resembling  a  trade  mark  as  to  be  calculated  to  deceive, 
is  falsely  applied,  as  the  case  may  be,  shall,  unless  he  proves — 

(a)  that  having  taken  all  reasonable  precautions  against 
committing  an  offence  against  this  Ordinance,  he  had  at  the  time 
of  the  commission  of  the  alleged  offence  no  reason  to  suspect 


COLONY  OF  SEYCHELLES  183 

the  genuineness  of  the  trade  mark,  mark,  or  trade  description; 
and 

(b)  that  on  demand  made  by  or  on  behalf  of  the  prosecutor 
he  gave  all  the  information  in  his  power  with  respect  to  the 
persons  from  whom  he  obtained  such  goods  or  thing;  or 

(c)  that  otherwise  he  had  acted  innocently, 
be  guilty  of  an  offence  against  this  Ordinance. 

(3)  Every  person  guilty  of  an  offence  against  this  Ordi- 
nance shall  be  liable  on  conviction : 

(i)  to  imprisonment,  with  or  without  hard  labour,  for  a 
term  not  exceeding  two  years,  or  to  fine  not  exceeding  one  thou- 
sand rupees  (Rs.  1,000),  or  both;  and 

(ii)  to  forfeit  to  His  Majesty  every  chattel,  article,  instru- 
ment, or  thing  by  means  of,  or  in  relation  to  which  the  offence 
has  been  committed. 

(4)  The  Court  before  whom  any  person  is  convicted  under 
this  section  may  order  any  forfeited  articles  to  be  destroyed  or 
otherwise  disposed  of,  as  the  Court  thinks  fit. 

Forging  trade  mark 

9.  A  person  shall  be  deemed  to  forge  a  trade  mark  who 
either : 

(a)  without  the  assent  of  the  proprietor  of  the  trade  mark 
makes  that  trade  mark  or  a  mark  so  nearly  resembling  that 
trade  mark  as  to  be  calculated  to  deceive ;  or 

(b)  falsifies  any  genuine  trade  mark,  whether  by  altera- 
tion, addition,  effacement,  or  otherwise; 

and  any  trade  mark  or  mark,  so  made  or  falsified,  is  in  this 
Ordinance  referred  to  as  a  forged  trade  mark. 

Provided  that  in  any  prosecution  for  forging  a  trade  mark 
the  burden  of  proving  the  assent  of  the  proprietor  shall  lie  on 
the  defendant. 

Applying  marks  and  descriptions 

10.  (1)  A  person  shall  be  deemed  to  apply  a  trade  mark, 
or  mark,  or  trade  description  to  goods  who 

(a)  applies  it  to  the  goods  themselves,  or 

(b)  applies  it  to  any  covering,  label,  reel,  or  other  thing 
in  or  with  which  the  goods  are  sold  or  exposed  or  had  in  pos- 
session for  any  purpose  of  sale,  trade,  or  manufacture;  or 

(c)  places,  encloses,  or  annexes  any  goods  which  are  sold 
or  exposed  or  had  in  possession  for  any  purpose  of  sale,  trade, 
or  manufacture,  in,  with,  or  to  any  covering,  label,  reel,  or  other 
thing  to  which  a  trade  mark  or  trade  description  has  been  ap- 
plied; or 

(d)  uses  a  trade  mark  or  mark  or  trade  description  in  any 


184  COLONY  OF  SEYCHELLES 

manner  calculated  to  lead  to  the  belief  that  the  goods  in  con- 
nection with  which  it  is  used  are  designated  or  described  by 
that  trade  mark  or  mark  or  trade  description. 

(2)  The  expression  " covering"  includes  any  stopper,  cask, 
bottle,  vessel,  box,  cover,  capsule,  case,  frame,  or  wrapper;  and 
the  expression  "label"  includes  any  band  or  ticket. 

A  trade  mark  or  mark,  or  trade  description  shall  be  deemed 
to  be  applied  whether  it  is  woven,  impressed,  or  otherwise 
worked  into,  or  annexed  or  affixed  to  the  goods  or  to  any  cover- 
ing, label,  reel,  or  other  thing. 

(2)  A  person  shall  be  deemed  to  apply  falsely  to  goods  a 
trade  mark  or  mark  who,  without  the  assent  of  the  proprietor 
of  a  trade  mark,  applies  such  trade  mark  or  a  mark  so  nearly 
resembling  it  as  to  be  calculated  to  deceive,  but,  in  any  prosecu- 
tion for  falsely  applying  a  trade  mark  or  mark  to  goods,  the 
burden  of  proving  the  assent  of  the  proprietor  shall  lie  on  the 
defendant. 

Exemption  of  certain  persons  employed  in  ordinary 

course  of  business 

11.  Where  a  defendant  is  charged  with  making  any  die, 
block,  machine  or  other  instrument  for  the  purpose  of  forging, 
or  being  used  for  forging,  a  trade  mark,  or  with  falsely  apply- 
ing to  goods  any  trade  mark  or  any  mark  so  nearly  resembling 
a  trade  mark  as  to  be  calculated  to  deceive  or  with  applying  to 
goods  any  false  trade  description,  or  causing  any  of  the  things 
in  this  section  mentioned  to  be  done,  and  proves 

(a)  that  in  the  ordinary  course  of  his  business  he  is  em- 
ployed, on  behalf  of  other  persons,  to  make  dies,  blocks,  ma- 
chines, or  other  instruments  for  making,  or  being  used  in  making 
trade  marks,  or  as  the  case  may  be,  to  apply  marks  or  descrip- 
tions to  goods,  and  that  in  the  case  which  is  the  subject  of  the 
charge  he  was  so  employed  by  some  person  resident  in  the  Sey- 
chelles Islands  and  was  not  interested  in  the  goods  by  way  of 
profit  or  commission  dependent  on  the  sale  of  such  goods ;  and 

(b)  that  he  had  taken  reasonable  precautions  against  com- 
mitting the  offence  charged ;  and 

(c)  that  he  had,  at  the  time  of  the  commission  of  the  al- 
leged offence,  no  reason  to  suspect  the  genuineness  of  the  trade 
mark,  mark,  or  trade  description ;  and 

(d)  that  he  gave  to  the  prosecutor  all  the  information  in 
his  power  with  respect  to  the  persons  on  whose  behalf  the  trade 
mark,  mark,  or  trade  description  was  applied, 

he  shall  be  discharged  from  the  prosecution,  but  shall  be  liable 
to  pay  the  costs  incurred  by  the  prosecutor,  unless  he  has  given 


COLONY  OF  SEYCHELLES  185 

due  notice  to  him  that  he  will  rely  on  the  above  defence. 
Application  of  Ordinance  to  watches 

12.  Where  a  watch  case  has  thereon  any  words  or  marks 
which  constitute,  or  are  by  common  repute  considered  as  con- 
stituting, a  description  of  the  country  in  which  the  watch  was 
made,  and  the  watch  bears  no  description  of  the  country  where 
it  was  made,  those  words  or  marks  shall  prima  facie  be  deemed 
to  be  a  description  of  that  country  within  the  meaning  of  this 
Ordinance,  and  the  provisions  of  this  Ordinance  with  respect 
to  goods  to  which  a  false  trade  description  has  been  applied, 
and  with  respect  to  selling  or  exposing  for,  or  having  in  pos- 
session for  sale,  or  any  purpose  of  trade  or  manufacture,  goods 
with  a  false  trade  description,  shall  apply  accordingly,  and  for 
the  purposes  of  this  section  the  expression  " watch"  means  all 
that  portion  of  a  watch  which  is  not  the  watch  case. 

Trade  mark — how  described  to  pleading 

13.  In  any  indictment,  pleading,  proceeding,  or  document, 
in  which  any  trade  mark  or  forged  trade  mark  is  intended  to 
be  mentioned,  it  shall  be  sufficient,  without  further  description 
and  without  any  copy  or  facsimile,  to  state  that  trade  mark  or 
forged  mark  to  be  a  trade  mark  or  forged  trade  mark. 

Rules  as  to  evidence 

14.  In  any  prosecution  for  an  offence  against  this  Ordi- 
nance : 

(1)  A  defendant,  and  his  wife  or  her  husband,  as  the  case 
may  be,  may,  if  the  defendant  thinks  fit,  be  called  as  a  witness, 
and,  if  called,  shall  be  sworn  or  solemnly  affirmed  and  examined, 
and  may  be  cross-examined  and  re-examined  in  like  manner  as 
any  other  witness. 

(2)  In  the  case  of  imported  goods,  evidence  of  the  port  of 
shipment  shall  be  primd  facie  evidence  of  the  place  or  country 
in  which  the  goods  were  made  or  produced. 

(i)  Provided  that  in  the  case  of  Free  Ports  in  British  Pos- 
sessions or  in  the  case  of  Ports  in  British  Possessions  wherein 
there  is  no  Officer  of  Customs,  a  written  statement  signed  by 
the  Governor  or  Officer  in  charge  for  the  time  being  of  such 
Possessions,  and  authenticated  by  the  seal  of  the  Colonial  Sec- 
retary of  the  Possessions,  shall  be  primd  facie  evidence  that 
such  imported  goods  are  or  are  not  of  the  manufacture  of  such 
Possessions,  as  the  case  may  be. 

(ii)  Provided  further  that  whenever  the  Collector  of  Cus- 
toms in  Seychelles  shall  have  reason  to  believe  that  goods  intro- 
duced from  the  above  Possessions  or  Ports  fall  within  the  cate- 
gory of  goods  the  importation  of  which  is  prohibited  by  section 


186  COLONY  OF  SEYCHELLES 

19  of  this  Ordinance,  and  any  Regulations  made  thereunder,  it 
shall  be  lawful  for  him  to  detain  such  goods  for  a  reasonable 
time  in  order  to  obtain  a  written  statement  as  aforesaid. 

Punishment  of  accessories 

15.  Any  person  who,  being  within  the  Seychelles  Islands, 
procures,  counsels,  aids,  abets,  or  is  accessory  to  the  commis- 
sion without  the  Seychelles  Islands  of  any  act  which,  if  com- 
mitted in  the  Seychelles  Islands,  would  under  this  Ordinance  be 
an  offence,  shall  be  guilty  of  that  offence  as  a  principal,  and 
be  liable  to  be  indicted,  proceeded  against,  tried,  and  convicted 
in  the  Seychelles  Islands,  as  if  the  offence  had  been  there 
committed. 

Search  warrant 

16.  (1)  Where  upon  information  of  an  offence  against 
this  Ordinance  the  Chief  Justice  or  a  Magistrate  has  issued 
either  a  summons  requiring  the  defendant  charged  by  such 
information  to  appear  to  answer  to  the  same,  or  a  warrant  for 
the  arrest  of  such  defendant,  and  either  the  said  Chief  Justice 
or  Magistrate  on  or  after  issuing  the  summons  or  warrant  is 
satisfied  by  information  on  oath  that  there  is  reasonable  cause 
to  suspect  that  any  goods  or  things  by  means  of,  or  in  relation 
to,  which  such  offence  has  been  committed  are  in  any  house  or 
premises  of  the  defendant,  or  otherwise  in  his  possession  or 
under  his  control  in  any  place,  such  Chief  Justice  or  Magistrate 
may  issue  a  warrant  under  his  hand  by  virtue  of  which  it  shall 
be  lawful  for  any  constable,  named  or  referred  to  in  the  war- 
rant, to  enter  such  house,  premises,  or  place  at  any  reasonable 
time  by  day,  and  to  search  therefor  and  seize  and  take  away 
those  goods  or  things;  and  any  goods  or  things  seized  under 
any  such  warrant  shall  be  brought  before  the  Competent  Court 
for  the  purpose  of  its  being  determined  whether  the  same  are 
or  are  not  liable  to  forfeiture  under  this  Ordinance. 

(2)  If  the  owner  of  any  goods  or  things  which,  if  the  owner 
thereof  had  been  convicted,  would  be  liable  to  forfeiture  under 
this  Ordinance  is  unknown  or  cannot  be  found,  an  information 
or  complaint  may  be  laid  for  the  purpose  only  of  enforcing  such 
forfeiture,  and  the  Chief  Justice  may  cause  notice  to  be  adver- 
tised, stating  that  unless  cause  is  shown  to  the  contrary  at  the 
time  and  place  named  in  the  notice,  such  goods  or  things  will 
be  forfeited,  and  at  such  time  and  place  the  Court,  unless  the 
owner  or  any  person  on  his  behalf,  or  other  person  interested 
in  the  goods  or  things,  shows  cause  to  the  contrary,  may  order 
such  goods  or  things  or  any  of  them  to  be  forfeited. 

(3)  Any  goods  or  things  forfeited  under  this  section,  or 


COLONY  OF  SEYCHELLES  187 

under  any  other  provision  of  this  Ordinance,  may  be  destroyed 
or  otherwise  disposed  of,  in  such  manner  as  the  Court  by  which 
the  same  are  forfeited  may  direct,  and  the  Court  may,  out  of 
any  proceeds  which  may  be  realised  by  the  disposition  of  such 
goods  (all  trade  marks  and  descriptions  being  first  obliterated) 
award  to  any  innocent  party  any  loss  he  may  have  innocently 
sustained  in  dealing  with  such  goods. 

Costs  of  defence  or  prosecution 

17.  On  any  prosecution  under  this  Ordinance  the  Court 
may  order  costs  to  be  paid  to  the  defendant  by  the  prosecutor, 
or  to  the  prosecutor  by  the  defendant,  having  regard  to  the 
information  given  by,  and  the  conduct  of,  the  defendant  and 
prosecutor  respectively. 

Limitation  of  prosecution 

18.  No  prosecution  for  an  offence  against  this  Ordinance 
shall  be  commenced  after  the  expiration  of  three  years  next 
after  the  commission  of  the  offence,  or  one  year  next  after  the 
first  discovery  thereof  by  the  prosecutor,  whichever  expiration 
first  happens. 

Prohibition  on  importation 

19.  (1)  All  imported  goods  which,  if  sold,  would  be  liable 
to  forfeiture  under  this  Ordinance,  and  also  all  the  goods  of 
foreign  manufacture  bearing  any  name  or  trade  mark  being  or 
purporting  to  be  the  name  or  trade  mark  of  any  manufacturer, 
dealer,  or  trader  in  the  United  Kingdom,  unless  such  name  or 
trade  mark  is  accompanied  by  a  definite  indication  of  the  coun- 
try in  which  the  goods  were  made  or  produced,  are  hereby 
prohibited  from  being  imported  into  the  Seychelles  Islands,  and, 
subject  to  the  provisions  of  this  section,  shall  be  included  among 
goods  prohibited  from  being  imported  as  if  they  were  specified 
in  Schedule  II  of  Ordinance  No.  7  of  1899  (The  Customs  Ordi- 
nance, 1899). 

(2)  Before  detaining  any  such  goods,  or  taking  any  further 
proceedings  with  a  view  to  the  forfeiture  thereof  under  the  law 
relating  to  the  Customs,  the  Collector  of  Customs  may  require 
the  regulations  under  this  section,  whether  as  to  information, 
security,  conditions,  or  other  matters,  to  be  complied  with,  and 
may  satisfy  himself  in  accordance  with  those  regulations  that 
the  goods  are  such  as  are  prohibited  by  this  section  from  being 
imported. 

(3)  The  Governor  in  Executive  Council  may  from  time  to 
time  make  regulations,  either  general  or  special,  respecting  the 
detention  and  forfeiture  of  goods  the  importation  of  which  is 
prohibited  by  this  section,  and  the  conditions,  if  any,  to  be  ful- 


188  COLONY  OF  SEYCHELLES 

filled  before  such  detention  or  forfeiture,  and  may  by  such 
regulations  determine  the  information,  notices,  and  security  to 
be  given ;  and  the  evidence  requisite  for  any  of  the  purposes  of 
this  section,  and  the  mode  of  verification  of  such  evidence. 

(4)  Where  there  is  on  any  goods  a  name  which  is  identical 
with  or  a  colourable  imitation  of  the  name  of  a  place  in  the 
United  Kingdom,  that  name  unless  accompanied  by  the  name 
of  the  country  in  which  such  place  is  situate  shall  be  treated  for 
the  purposes  of  this  section  as  if  it  were  the  name  of  a  place 
in  the  United  Kingdom. 

(5)  Such  regulations  may  apply  to  all  goods  the  importa- 
tion of  which  is  prohibited  by  this  section  or  different  regula- 
tions may  be  made  respecting  different  classes  of  such  goods 
or  of  offences  in  relation  to  such  goods. 

(6)  The  regulations  may  provide  for  the  informant  reim- 
bursing the  Collector  of  Customs  all  expenses  and  damages 
incurred  in  respect  of  any  detention  made  on  his  information 
and  of  any  proceedings  consequent  on  such  detention. 

(7)  All  regulations  under  this  section  shall  be  published  in 
the  Government  Gazette  and  shall  be  laid  before  the  Legisla- 
tive Council  at  its  next  meeting. 

Implied  warranty  on  sale  of  marked  goods 

20.  On  the  sale  or  in  the  contract  for  the  sale  of  any 
goods  to  which  a  trade  mark,  or  mark,  or  trade  description  has 
been  applied,  the  vendor  shall  be  deemed  to  warrant  that  the 
mark  is  a  genuine  trade  mark  and  not  forged  or  falsely  applied, 
or  that  the  trade  description  is  not  a  false  trade  description 
within  the  meaning  of  this  Ordinance,  unless  the  contrary  is 
expressed  in  some  writing  signed  by  or  on  behalf  of  the  vendor 
and  delivered  at  the  time  of  the  sale  or  contract  to  and  accepted 
by  the  vendee. 

Provisions  of  Ordinance  as  to  false  descriptions  not  to  apply 

in  certain  cases 

21.  (1)  Where,  at  the  passing  of  this  Ordinance,  a  trade 
description  is  lawfully  and  generally  applied  to  goods  of  a 
particular  class,  or  manufactured  by  a  particular  method,  to 
indicate  the  particular  class  or  method  of  manufacture  of  such 
goods,  the  provisions  of  this  Ordinance  with  respect  to  false 
trade  descriptions  shall  not  apply  to  such  trade  description 
when  so  applied. 

(2)  Provided  that  where  such  trade  description  includes 
the  name  of  a  place  or  country,  and  is  calculated  to  mislead  as 
to  the  place  or  country  where  the  goods  to  which  it  is  applied 
were  actually  made  or  produced,  and  the  goods  are  not  actually 


COLONY  OF  SEYCHELLES  189 

made  or  produced  in  that  place  or  country,  this  section  shall 
not  apply  unless  there  is  added  to  the  trade  description,  im- 
mediately before  or  after  the  name  of  that  place  or  country, 
in  an  equally  conspicuous  manner,  with  that  name,  the  name  of 
the  place  or  country  in  which  the  goods  were  actually  made  or 
produced  with  a  statement  that  they  were  made  or  produced 
there. 

Savings 

22.  (1)  This  Ordinance  shall  not  exempt  any  person  from 
any  action,  suit,  or  other  proceeding  which  might,  but  for  the 
provisions  of  this  Ordinance,  be  brought  against  him. 

(2)  Nothing  in  this  Ordinance  shall  entitle  any  person  to 
refuse  to  make  a  complete  discovery,  or  to  answer  any  question 
or  interrogatory  in  any  action,  but  such  discovery  or  answer 
shall  not  be  admissible  in  evidence  against  such  person  in  any 
prosecution  for  an  offence  against  this  Ordinance. 

(3)  Nothing  in  this  Ordinance  shall  be  construed  so  as  to 
render  liable  to  any  prosecution  or  punishment  any  servant  of 
a  master  resident  in  the  Seychelles  Islands  who  bona  fide  acts 
in  obedience  to  the  instruction  of  such  master,  and,  on  demand 
made  by  or  on  behalf  of  the  prosecutor,  has  given  full  informa- 
tion as  to  his  master. 

False  representation  as  to  Royal  Warrant 

23.  Any  person  who  falsely  represents  that  any  goods  are 
made  by  a  person  holding  a  Eoyal  Warrant,  or  for  the  service 
of  His  Majesty  or  any  of  the  Eoyal  Family,  or  any  Government 
department,  shall  be  liable,  on  summary  conviction  to  a  fine  not 
exceeding  two  hundred  Rupees  (Rs.  200). 

Repeal 

24.  Paragraph  VI  of  Schedule  II  of  Ordinance  No.  7  of 
1899  is  hereby  repealed  and  replaced  by  the  following  para- 
graph, which  shall  stand  and  be  read  in  lieu  of  the  aforesaid 
paragraph : 

"VI.    Goods  referred  to  in  section  19  of  'The  Merchandise 
Marks  Ordinance,  1903.'  " 

Short  title 

25.  This  Ordinance  may  be  cited  as  "The  Merchandise 
Marks  Ordinance,  1903." 

Coming  into  force 

26.  This  Ordinance  shall  come  into  force  on  the  day  of  its 
publication  [G.  G.  No.  34  of  11.7.1903]. 


CONGO  FREE  STATE 
(BELGIAN   CONGO) 

DECREE  OF  APRIL  26,  1888,  AND  DECREE  OF 
EXECUTION  OF  APRIL  27,  1888 

ARTICLE  1.  Every  mark  used  to  distinguish  the  products 
of  an  industry  or  objects  of  commerce  is  considered  a  trade 
mark  or  a  commercial  mark. 

The  name  of  a  person,  as  well  as  the  firm  name  of  a  commer- 
cial or  industrial  house  may,  in  the  distinctive  form  given  it  by 
the  interested  party,  serve  as  a  trade  mark. 

ART.  2.  No  one  may  lay  claim  to  the  exclusive  use  of  a 
mark  unless  he  has  lodged  facsimiles  in  triplicate  with  the  elec- 
trotype of  the  mark  in  the  Department  of  Foreign  Affairs. 

ART.  3.  He  only  who  first  made  use  of  a  mark  may  effect 
the  registration  of  it. 

ART.  4.  Foreigners  as  well  as  natives  of  the  Congo  Free 
State  are  admitted  without  distinction  to  the  benefits  of  the 
present  decree  for  the  products  of  commercial  or  industrial 
establishments  conducted  either  within  or  without  the  country. 

ART.  5.  Our  Administrator  General  of  Foreign  Affairs  is 
charged  with  the  regulation  of  all  that  relates  to  the  present 
decree,  notably  to  the  conditions  and  formalities  of  registration, 
the  taxes  to  be  collected,  the  penalties  applicable  to  counter- 
feiting and  other  infractions  in  matters  of  marks. 

ART.  6.    The  present  decree  shall  enter  into  force  this  day. 

Given  at  Brussels,  April  26,  1888. 


TRADE  MARKS  AND  COMMERCIAL  MARKS 

DECREE  OF  EXECUTION 

ARTICLE  1.  The  registration  of  trade  marks  or  commer- 
cial marks  shall  be  inscribed  in  a  special  register,  and  signed 
by  the  registrant  or  his  attorney,  as  well  as  by  the  Administra- 
tor General  or  his  delegate.  The  power  of  attorney  shall  be 
attached  to  the  registration.  The  latter  shall  show  the  day  and 
hour  of  registration.  It  shall  indicate  the  kind  of  industry  or 
of  commerce  for  which  the  registrant  has  the  intention  to  use 
the  mark. 

A  certificate  of  the  registration  shall  be  delivered  to  the 
registrant. 


CONGO  FREE  STATE  191 

Advertisement  of  registered  marks  shall  be  made  in  the 
Official  Bulletin. 

ART.  2.  There  is  to  be  paid  a  tax  of  twenty-five  francs  for 
each  mark  registered. 

ART.  3.  The  person  registering  the  mark  should  furnish: 
(1)  a  copy  in  triplicate  of  the  mark  adopted.  This  copy  should 
be  drawn  within  a  border,  which  should  not  exceed  8  centimetres 
in  height  and  10  centimetres  in  width. 

(2)  An  electro  of  the  mark.  The  dimensions  of  the  electro- 
type, which  shall  be  of  metal,  must  not  exceed  those  of  the  border 
mentioned  above. 

ART.  4.  A  certificate  of  the  official  record  shall  be  delivered 
to  the  registrant  on  payment  of  the  tax ;  another  shall  be  sent  to 
the  Court  of  the  Congo.  To  each  of  the  certificates  shall  be 
affixed  one  of  the  facsimiles  of  the  registered  mark. 

ART.  5.  A  trade  mark  may  not  be  assigned  except  with  the 
establishment,  the  articles  of  which,  either  of  manufacture  or 
commerce,  it  serves  to  distinguish. 

The  assignment  shall  not  be  of  effect  in  regard  to  third  par- 
ties until  after  the  registration  of  a  copy  of  the  instrument  of 
assignment.  Mention  of  the  assignment  of  the  mark  shall  be 
made  on  the  margin  of  the  record  of  registration  and  copies 
shall  be  inscribed  on  the  certificate  sent  to  the  interested  parties 
and  to  the  Court  of  the  Congo. 

Every  assignment  of  a  mark  by  contract  between  living  per- 
sons or  by  will  shall  be  subject  to  a  tax  of  ten  francs. 

ART.  6.  There  shall  be  punished  by  a  fine  of  twenty-six 
to  two  thousand  francs  and  imprisonment  of  eight  days  to  six 
months,  or  by  one  of  these  penalties  only : 

a)  Those  who  counterfeit  a  mark  and  those  who  fraudu- 
lently make  use  of  a  counterfeit  mark. 

b)  Those  who  fraudulently  affix  to  the  products  of  their 
industry  or  articles  of  their  commerce  a  mark  belonging  to 
another. 

c)  Those  who  knowingly  sell,  place  on  sale  or  in  circulation, 
products  bearing  a  mark  counterfeited  or  fraudulently  affixed. 

ART.  7.  If  there  exist  extenuating  circumstances,  the  pen- 
alties of  imprisonment  and  fines  may  be  reduced  below  the  mini- 
mum fixed  in  Art.  6. 

ART.  8.  Special  confiscation  may  be  pronounced  in  con- 
formity with  Article  34  of  the  decree  of  January  7,  1886. 

ART.  9.  A  public  action  may  not  be  prosecuted  except  on 
the  complaint  of  an  injured  person. 

ART.  10.  The  registration  of  a  mark  made  in  contraven- 
tion of  the  legal  provisions  shall  be  declared  null  at  the  demand 


192  CONGO  FREE  STATE 

of  any  interested  party. 

Notice  of  the  judgment  pronouncing  the  nullity  of  a  regis- 
tration shall,  after  it  shall  have  acquired  the  force  of  law,  be 
sent  to  the  Registrar  of  the  Department  of  Foreign  Affairs,  who 
shall  see  to  it  that  the  judgment  is  mentioned  on  the  margin  of 
the  record  of  registration. 

ART.  11.  Those  interested  may,  without  cost,  obtain  infor- 
mation concerning  registered  marks. 

ART.  12.     This  decree  shall  enter  into  force  this  day. 

Brussels,  April  27,  1888. 


COSTA  RICA 

LAW  OF  MAY  22,  1896 

ARTICLE  1.  There  shall  be  considered  as  marks  of  manu- 
facture and  of  commerce  the  names  of  manufacturers  and  mer- 
chants, seals,  stamps,  engravings,  vignettes,  ciphers,  devices, 
legends,  or  any  other  distinctive  signs  whatsoever,  serving  to 
identify  the  products  of  a  factory  or  the  objects  of  an  establish- 
ment of  commerce. 

ART.  2.  The  use  of  marks  of  manufacture  and  of  commerce 
is  optional ;  but  in  certain  cases  the  police  authorities  may  make 
it  compulsory. 

ART.  3.  The  ownership  of  a  mark  of  manufacture  or  of 
commerce  shall  be  acquired  by  the  registration  thereof  in  the 
corresponding  Register  and  the  filing  of  two  facsimiles  of  the 
same  mark. 

ART.  4.  The  Executive  shall  issue  the  necessary  regula- 
tions for  the  formalities  of  registration  and  deposit  and  shall 
designate  the  office  where  such  operations  must  be  effected. 

ART.  5.  The  ownership  of  a  mark  of  manufacture  or  of 
commerce  shall  be  acquired  only  for  a  term  of  fifteen  years; 
however,  it  may  be  renewed  indefinitely  every  ten  years. 

ART.  6.  For  the  renewal  of  a  mark  of  manufacture  or  of 
commerce  there  will  be  sufficient  the  declaration  by  the  owner 
before  the  proper  Bureau,  made  within  thirty  days  after  the 
expiration  of  the  concession.  This  term  expired,  the  right 
acquired  shall  lapse. 

ART.  7.  The  ownership  acquired  by  the  registration  and 
deposit  of  a  mark  of  manufacture  or  of  commerce  shall  only 
confer  the  right  of  using  the  same  mark,  but  in  no  case  that 
of  the  exclusive  manufacture  or  sale  of  the  product  or  article. 

ART.  8.  There  shall  be  responsible  jointly  and  severally, 
for  frauds  committed  against  the  ownership  of  marks  of  manu- 
facture or  of  commerce,  save  proof  of  their  innocence,  the  per- 
son for  whose  account  the  fraud  has  been  committed,  the  authors 
of  the  falsification,  and  the  importers  of  or  dealers  in  the  falsi 
fied  article  or  product. 

ART.  9.  Infringement  committed  against  marks  of  manu- 
facture or  of  commerce  shall  be  punished  in  conformity  with 
Art.  496,  paragraph  3,  of  the  Penal  Code. 

ART.  10.  Marks  of  manufacture  or  of  commerce  shall  not 
be  granted  for  the  manufacture  or  sale  of  illicit  articles  or 
products. 


194  COSTA  EICA 

ART.  11.  There  is  prohibited  in  marks  of  manufacture  or 
of  commerce  the  use  of  immoral  designs,  prints,  or  vignettes. 

ART.  12.  The  coat  of  arms  of  the  Republic  and  the  national 
flag  shall  not  be  allowed  to  be  used  in  marks  of  manufacture  or 
of  commerce. 


CUBA 

ROYAL  DECREE,  AUGUST  21,  1884,  AS  AMENDED  BY 
CIVIL  ORDERS  NOS.  511  OF  DECEMBER  18,  1900;  512 
OF  DECEMBER  19,  1900;  18  OF  JANUARY  17,  1901; 
AND  105  OF  APRIL  19,  1901. 

TITLE  I 

GENERAL  PROVISIONS 

ARTICLE  1.  There  shall  be  considered  as  marks  of  manu- 
facture, of  commerce,  of  agriculture  and  of  any  other  industry, 
the  names  of  manufacturers,  merchants,  agrarians,  industrials 
of  all  classes,  or  companies  formed  by  the  same,  the  denomina- 
tions, emblems,  coats  or  arms,  engravings,  vignettes,  marks, 
stamps,  seals,  reliefs,  letters,  ciphers,  envelopes,  wrappings  or 
signs,  whatever  be  their  form,  that  serve  to  the  end  that  the 
manufacturer,  merchant  or  agrarian,  industrial  of  any  class, 
or  company  formed  by  them,  may  distinguish  his  products  or 
goods,  with  the  object  of  the  public  recognizing  and  distinguish- 
ing them  without  confusing  them  with  others. 

ART.  2.  There  shall  be  comprised  in  the  benefits  of  this 
Decree  designs  destined  for  the  printing  of  textiles  and  papers ; 
those  of  this  class  painted  for  decoration,  models  for  jewelry, 
cabinet-making,  carving,  and  in  general  all  industrial  designs 
and  models. 

ART.  3.  Signs  or  other  exterior  or  material  designations 
by  means  of  which  a  merchant  distinguishes  his  establishment 
from  others  of  the  same  kind  shall  not  be  subject  to  this  dis- 
position. 

ART.  4.  Any  manufacturer,  merchant,  agrarian  or  indus- 
trial of  other  class,  who  individually  or  collectively  desires  to 
use  any  mark  to  distinguish  the  products  of  a  factory,  the 
objects  of  his  commerce,  prime  raw  materials  or  any  other 
whatever,  or  the  live  stock  industry,  and  those  also  that  desire 
to  preserve  the  ownership  of  industrial  designs  and  models, 
shall  have  to  petition  certificate  of  ownership  in  accordance 
with  the  prescriptions  of  this  Decree. 

He  who  is  lacking  of  said  certificate  may  not  use  any  mark 
or  distinctive  for  the  products  of  his  industry,  nor  prevent 
others  from  employing  his  impressions,  industrial  designs  or 
models. 

ART.  5.  The  manufacturer,  merchant,  agrarian,  or  indus- 
trial of  other  character,  may  adopt  for  the  products  of  his 


196  CUBA 

factory,  commerce  or  agricultural  industry  the  distinctive  that 
he  may  deem  expedient,  excepting  those  that  are  mentioned 
hereafter : 

1.  The  arms  and  standard  of  the  Nation  and  Cuban  decora- 
tions, unless  such  be  comoetently  authorized  to  this  effect; 

2.  The  coats  of  arms,  insignia,  heraldic  designs  or  devices 
of  foreign  States  or  Nations,  without  the  express  consent  of 
the  respective  Governments; 

3.  The  denominations  generally  used  in  commerce  for  de- 
termining the  class  of  merchandise ; 

4.  Figures  that  offend  public  morals  and  caricatures  that 
tend  to  ridicule  ideas,  persons  or  objects  worthy  of  consider- 
ation ; 

5.  Distinctives  whereof  others  may  have  obtained,  with 
priority,  certificate  of  registration  for  a  like  class  of  products, 
merchandise  or  objects,  when  said  certificate  has  not  yet  expired 
in  accordance  with  this  Decree; 

6.  Distinctives  that  through  their  semblance  or  similarity 
to  others  already  granted  may  induce  to  confusion  or  error; 

7.  Those  relative  to  any  religious  cult,  whenever  through 
the  ensemble  of  the  mark  it  be  deemed  that  it  is  intended  to 
ridicule,  revile,  or  disesteem  it,  or  which  involuntarily  may  con- 
duce to  the  same  result; 

8.  The  portraits  of  persons  living,  unless  obtaining  from 
them  adequate  permission,  and  those  of  persons  that  have  died, 
when  their  relatives,  within  the  fourth  civil  degree,  shall  make 
opposition  to  the  concession; 

ART.  6.  Marks  of  manufacture  shall  be  obligatory  solely 
for  objects  of  gold  or  silver,  chemical  and  pharmaceutical 
products,  and  others  that  special  regulations  shall  determine. 

TITLE  II 

THE  RIGHT  or  OWNERSHIP  IN  MARKS,  DESIGNS  AND 
INDUSTRIAL  MODELS 

ART.  7.  No  one  may  claim  the  ownership  of  marks,  designs 
or  industrial  models  unless  he  shall  have  the  corresponding 
certificate  and  shall  evidence  having  complied  with  the  dispo- 
sitions that  this  Decree  determines. 

ART.  8.  When  two  or  more  persons  shall  solicit  the  same 
mark,  the  right  of  ownership  shall  correspond  to  him  who  first 
shall  have  presented  his  application,  in  accordance  with  the 
day  and  hour  on  which  it  appears  registered. 

ART.  9.  No  one  may  solicit  or  acquire  more  than  one  mark 
for  the  same  industry  or  the  same  class  of  products. 

ART.  10.    The  certificate  of  ownership  of  mark,  design  or 


CUBA  197 

industrial  model,  may  only  be  obtained  by  Cuban  or  foreign 
manufacturers,  merchants,  agrarians  and  industrials  of  other 
class  established  in  Cuba,  or  companies  formed  by  any  of  these, 
for  the  ends  of  the  present  Decree. 

ART.  11.  Foreigners  that  reside  without  Cuba  shall  have 
the  rights  that  are  granted  to  them  through  agreements  cele- 
brated with  their  respective  Nations. 

There  being  no  Treaties,  there  shall  be  observed  strictly 
the  right  of  reciprocity. 

TITLE  III 

LEGAL  EFFECTS  OF  THE  CERTIFICATE  OF  OWNERSHIP  OF  MARKS, 

DESIGNS  AND  INDUSTRIAL  MODELS 

ART.  12.  He  that,  in  accordance  with  this  disposition, 
obtains  a  certificate  of  ownership  of  marks,  designs  or  indus- 
trial models,  is  authorized : 

1.  To  criminally  prosecute  before  the  Tribunals  of  Justice, 
subject  to  the  dispositions  of  the  Penal  Code  and  to  those  of 
this  Decree,  those  that  shall  use  marks,  designs  or  industrial 
models  falsified  or  imitated  in  such  way  that  they  may  be  con- 
fused with  the  genuine;  those  that  use  marks  with  indications 
possible  of  deceiving  the  purchaser  regarding  the  nature  of 
the  product;  those  that  without  competent  authorization  shall 
use  legitimate  marks,  designs  or  industrial  models ;  and,  finally, 
those  that  without  falsifying  a  mark  shall  detach  or  separate 
it  from  some  products  in  order  to  avail  themselves  thereof  by 
placing  it  on  others ; 

Those  that  shall  buy  or  sell  containers  with  marks  stamped 
permanently  and  which  are  registered  in  favor  of  another  per- 
son, except  when  it  be  done  by  this  latter  or  his  authorized 
agent,  or  shall  utilize  them  by  placing  therein  for  its  sale  mer- 
chandise like  or  similar  to  that  for  which  said  containers  are 
intended  by  the  owner  of  the  mark.  In  such  cases  the  containers 
shall  be  sequestered,  which  same  the  defrauder  shall  lose  in 
favor  of  the  party  defrauded ; 

2.  To  petition  civilly  before  the  Tribunals  of  Justice  indem- 
nification for  all  damages  and  injuries  that  may  have  been 
occasioned  by  those  that  falsify  a  mark,  design  or  industrial 
model  conceded,  by  those  that  use  them  falsified  or  imitated 
and  by  the  others  to  whom  the  preceding  paragraph  refers ; 

3.  To  demand  civilly  like  indemnification  from  the  mer- 
chant that  suppresses  the  mark  or  distinctive  sign  of  the  pro- 
ducer without  his  express  consent,  although  he  may  not  prevent 
him  from  adding  separately  his  own  mark  or  the  peculiar  sign 
of  his  commerce ;  and 


198  CUBA 

4.  To  lodge  opposition  to  there  being  conceded  certification 
of  ownership  of  mark,  design  or  industrial  model,  when  that 
which  is  solicited  is  like  that  of  his  ownership  or  shall  have, 
with  respect  to  it,  similarity,  semblance  or  indications  sufficient 
to  deceive  the  purchaser.* 

ART.  13.  Every  concession  of  certificate  of  mark,  design 
or  industrial  model  shall  be  understood  as  made  without  preju- 
dice to  third  parties. 

ART.  14.  Foreign  products  with  Cuban  marks  shall  be 
prohibited  and  shall  be  confiscated  on  their  entry  in  the  Custom 
Houses  of  Cuba,  whether  they  be  marks  entirely  new,  falsifica- 
tion of  those  recognized  to  the  producers  of  the  country,  or 
simply  an  imitation  of  the  same;  there  remaining  always  ex- 
cepted  the  right  that  corresponds  to  the  owner  of  the  recognized 
mark  to  prosecute  civilly  and  criminally  the  falsifier  or  imitator 
of  the  same. 

ART.  15.  The  ownership  of  certificates  of  marks,  designs 
or  industrial  models,  shall  be  considered  as  all  other  chattels  as 
regards  assignment,  prescription  and  other  legal  effects. 

Criminal  actions  shall  expire  by  limitation,  subject  to  what 
is  established  in  the  Penal  Code. 

ART.  16.  For  the  greater  guarantee  of  assignees  of  marks, 
designs  or  industrial  models,  there  shall  be  given  account  to 
the  Secretariat  of  Agriculture,  Commerce  and  Labor,  through 
intermediary  of  the  Governors  of  the  respective  Provinces,  of 
each  of  the  assignments  or  successions,  by  presenting  proof  of 
the  instrument  of  assignment  or  sale,  or  of  the  testamentary 
clause,  within  the  term  of  three  months,  counted  from  the  date 
on  which  the  right  has  been  acquired,  in  order  that  record  may 
be  made  and  that  it  be  filed  in  said  Secretariat. 

TITLE  IV 

EXPIRATION  OF  THE  RIGHT  OF  OWNERSHIP  OF  MARKS,  DESIGNS 

OR  INDUSTRIAL  MODELS 

ART.  17.    Certificates  of  ownership  shall  expire  in  fifteen 
years,  counted  from  the  date  of  their  concession,  but  they  may 
be  renewed  by  the  same  means  prescribed  for  acquiring  them. 
ART.  18.     Certificates  shall  expire,  in  addition: 

1.  Through  the  disappearance  of  the  persona  juridica  to 
whom  its  use  pertains; 

2.  Through  executory  sentence  of  the  competent  Tribunal, 
such  only  with  relation  to  the  person  defeated  in  the  action ; 

3.  When  the  party  interested  solicits  it; 

*  For   supplemental   enactment   covering   oppositions,   see   Decree   No.    1238  of 
September  9,  1915,  with  amendments. 


CUBA  199 

4.  When  he  that  shall  obtain  the  ownership  of  a  mark  does 
not  make  use  thereof  within  Cuban  territory  within  the  term  of 
two  years  counting  from  the  date  of  the  concession; 

5.  When  the  pronrietor  of  a  mark,  after  having  commenced 
to  make  use  thereof,  shall  cease  to  affix  it  to  the  products  of  his 
industry  for  one  year  and  one  day,  unless  it  shall  be  justified 
as  of  force  majeure; 

6.  When  there  be  not  fulfilled  the  other  requirements  estab- 
lished in  this  Decree. 

ART.  19.  Every  case  of  petition  for  certificate  of  owner- 
ship shall  be  without  effect  if,  within  the  thirty  days  following 
that  of  its  date,  there  shall  not  be  fulfilled  for  reasons  imputa- 
ble  to  the  applicant  the  formalities  prescribed  by  this  Royal 
Decree. 

ABT.  20.  Declaration  of  expiration  in  the  cases  indicated 
in  Art.  18,  Nos.  1,  3,  4  and  6,  shall  correspond  to  the  Secretary 
of  Agriculture,  Commerce  and  Labor,  and  against  his  resolu- 
tion there  shall  be  lodged  appeal  to  the  President  of  the  Repub- 
lic, within  the  term*  that  Art.  57  of  the  Organic  Law  of  the 
Executive  Power  determines,  and  against  the  resolution  of  the 
President  contentious-administrative  proceedings  in  appeal 
may  be  lodged!  before  the  Sola  de  lo  Civil  y  de  lo  Contencioso 
administrative  de  la  Audiencia  de  la  Habana. 

When  use  has  not  been  made  within  one  year  and  one  day, 
there  shall  correspond  to  the  Tribunals  the  declaration  of 
expiration,  on  petition  of  the  interested  party. 

Persons  or  collectivities  that  by  virtue  of  this  Decree  shall 
have  right  to  the  use  of  marks,  designs  or  industrial  models, 
may  petition  at  any  time  the  nullification  of  those  already  con- 
ceded, by  presenting  to  this  effect  satisfactory  reasons.  When, 
as  a  result  of  these,  there  arises  a  question  of  possession  or 
ownership,  the  Administration  shall  stay  the  executory  proceed- 
ings and  shall  direct  the  parties  to  the  ordinary  Tribunals  to 
the  end  that  they  may  avail  themselves  of  the  right  in  accord- 
ance with  which  they  believe  themselves  justified. 

TITLE  V 

FORMALITIES  FOR  THE  ISSUE  OF  CERTIFICATES 
ART.  21.    The  right  to  the  ownership  of  marks,  designs  or 
industrial   models,   that   this   disposition   recognizes    shall   be 
acquired  by  certificates  and  the  fulfillment  of  the  other  pro- 
visions that  the  same  determines. 

ART.  22.    In  order  that  manufacturers,  industrials,  mer- 

*  Ten  days. 
fNinety  days. 


200  CUBA 

chants  or  agrarians  may  have  due  protection  in  the  enjoyment 
of  their  marks,  distinctive  signs  of  manufacture,  designs  or 
industrial  models,  they  shall  previously  make  application  to  the 
Secretariat  of  Agriculture,  Commerce  and  Labor,  for  the  corre- 
sponding certificate  of  ownership,  if  the  applicant  shall  have  his 
domicile  or  establishment  in  the  Province  of  Habana ;  or,  those 
that  do  not  have  such  in  the  said  Province,  if  it  should  seem 
proper  to  them,  through  the  intermediary  of  the  Governors  of 
their  respective  Provinces.  In  the  application  there  shall  be 
described  in  detail  with  all  precision  the  class  of  mark  adopted, 
the  form,  letters  or  signs,  that  its  subject  matter  contains,  the 
article  for  which  the  mark  or  design  is  intended,  the  name  of 
its  owner,  his  domicile  or  place  at  which  his  establishment  is 
found,  there  being  included,  in  addition,  six  facsimiles  of  the 
design  of  the  mark  that  it  is  desired  to  register,  three  of  them 
with  their  description  appended,  attested  with  the  signature  of 
the  applicant,  the  license  that  evidences  his  quality  of  industrial 
or  merchant  and  the  last  receipt  of  contribution.  If  it  shall 
be  a  question  of  a  mark  for  live  stock,  it  shall  be  sufficient  if 
the  petitioner  with  his  application  evidences  that  he  is  an  owner 
of  live  stock,  through  certificate  issued  by  those  charged  with 
the  registration  of  cattle. 

ART.  23.  When  manufacturers  shall  desire  to  maintain 
secrecy  as  regards  the  method  employed  in  the  stamping  of  the 
mark  or  industrial  design,  they  shall  so  state  in  the  application, 
describing  it  in  a  closed  and  sealed  envelope,  which  shall  be 
opened  only  in  case  of  litigation. 

ART.  24.  The  officer  charged  with  the  General  Register 
of  the  Secretariat  of  Agriculture,  Commerce  and  Labor,  or,  in 
his  case,  the  Secretary  of  the  Provincial  Governor,  in  the  act 
of  receiving  the  application  papers,  to  which  Art.  22  makes 
reference,  shall  impress,  by  means  of  a  stamp,  at  the  foot 
of  each  one  of  the  facsimiles  presented,  on  which  appears  the 
description  of  the  mark,  model  or  design,  or  shall  endorse  in 

writing  the  following:  " Presented  before  me, day 

year hour minute,  by  Mr ,  who 

proves  that  he  is  recorded  as according  to  license 

No issued  by  the  local  government  of 

on and  to  be  paid  up  as  regards  contributions 

according  to  receipt  No ,  dated , 

whose  application  is  filed  under  No ",  signing  this 

endorsement  and  stamping  the  official  seal.  Said  note  expres- 
sive of  the  date,  hour  and  minute  of  the  presentation,  shall 
serve  for  determining  the  priority  of  the  applicant  in  case  of 
identical  or  like  petitions. 


CUBA  201 

There  shall  not  be  admitted  nor  shall  course  be  given  to 
any  application  in  which  the  requirements  above  expressed  are 
not  fulfilled. 

ART.  25.  For  each  certificate  of  ownership  that  shall  be 
petitioned,  there  shall  be  opened  in  the  Secretariat  of  Agricul- 
ture, Commerce  and  Labor,  a  file  in  which  there  shall  appear 
the  application  and  one  of  the  facsimiles  of  the  design  of  the 
mark  on  which  there  shall  have  been  entered  the  annotation  of 
presentation. 

ART.  26.  In  the  case  of  there  being  presented  in  the  Pro- 
vincial Government  the  application  whereof  Art.  22  treats,  one 
of  the  facsimiles  of  the  mark  on  which  appears  the  note  of 
presentation  shall  be  delivered  in  the  same  act  to  the  interested 
party,  along  with  the  license  and  the  receipt  of  contribution 
that  he  has  exhibited;  another  shall  be  forwarded  to  the  Secre- 
tariat of  Agriculture,  Commerce  and  Labor  with  the  other 
documents  presented  and  the  third  shall  be  filed  and  retained 
in  the  Office  in  charge  of  the  Secretary  of  Provincial  Govern- 
ment, there  being  given  to  it  a  number  and  there  being  included 
with  it  all  the  corresponding  papers  in  chronological  order  of 
presentation,  care  being  taken  to  make  an  alphabetical  index  of 
the  names  of  the  applicants  that  each  one  of  the  papers  contains. 

In  the  case  of  the  application  being  presented  directly  to 
the  Secretariat  of  Agriculture,  Commerce  and  Labor,  the  pro- 
cedure of  which  the  preceding  paragraph  treats  shall  be  in 
charge  of  the  same,  and  within  three  days  there  shall  be  for- 
warded one  of  the  facsimiles  of  the  design  of  the  mark,  with  the 
corresponding  annotation,  to  the  respective  Provincial  Govern- 
ment, for  the  ends  already  indicated,  and  there  shall  be  made 
a  general  index  of  all  applications  that  are  presented  in  the 
same  or  through  intermediary  of  the  Provincial  Governments. 

The  files  of  the  facsimiles  deposited  with  the  Provincial 
Governments  shall  take  the  place  of — in  applications  that  are 
presented  in  the  future — the  Special  Book  of  Registry  which, 
by  the  present  Decree,  shall  no  longer  be  opened  by  the  said 
Provincial  Governments,  but  they  shall  be  preserved  in  their 
archives. 

ART.  27.  On  report  of  the  Economic  Society,  which  in  its 
turn  shall  hear  the  Municipal  Authorities  of  the  Capital  as 
regards  tobaccos,  cigars,  and  matches,  as  to  whether  the  mark, 
design  or  industrial  model,  has  already  been  used  on  manufac- 
tures of  the  same  class,  or  whether  it  is  the  property  of  a  third 
party,  the  manufacturer  shall  obtain  a  certificate  or  title  that 
evidences  his  having  presented  and  justified  his  mark,  design 
or  industrial  model,  there  being  expressed  therein  with  all  pre- 


202  CUBA 

cision  its  form  and  other  circumstances. 

ART.  28.  The  applicant  shall  pay,  as  fees  for  the  issue  of 
the  title  of  ownership,  twelve  pesos,  fifty  centavos,  in  money 
of  legal  tender.  Said  payment  shall  be  made  in  the  correspond- 
ing Office  of  the  Treasury,  within  the  term  of  thirty  days, 
counted  from  the  date  on  which  there  shall  be  communicated 
to  the  interested  party  the  concession  of  the  mark,  marks,  design 
or  industrial  model,  under  penalty  of  caducity;  presenting  to 
the  Secretariat  of  Agriculture,  Commerce  and  Labor  the  docu- 
ment verifying  it,  in  order  that  the  same  may  be  able  to  issue 
to  him  and  will  issue  to  him  the  said  title,  of  which  note  shall 
be  taken  in  the  Register  opened  for  this  purpose  in  the  Section 
of  Intellectual  Property,  Marks  and  Patents,  of  said  Secretariat. 

ART.  29.  The  Secretariat  of  Agriculture,  Commerce  and 
Labor  shall  forward  to  the  Economic  Society  one  facsimile  of 
each  mark,  design  or  industrial  model,  of  which  certificate  of 
ownership  is  issued,  with  all  the  antecedents  necessary  to  the 
ends  determined  in  Art.  38;  and  shall  publish  in  the  Gaceta 
Oficial,  quarterly,  the  certificates  of  ownership  issued  during 
this  period,  and  at  the  end  of  the  year  the  general  state  of  all 
those  granted  during  its  course.  In  case  of  litigation,  before 
the  competent  Judge,  there  shall  be  exhibited  the  facsimile 
issued. 

C) 

ART.  36.  In  the  issue  of  titles  of  ownership  of  marks  it 
shall  be  borne  in  mind : 

1.  That,  to  manufacturers  that  apply  for  a  certificate  of  the 
same  and  identical  mark,  even  though  for  different  goods,  there 
shall  not  be  issued  more  than  a  single  certificate  therefor,  there 
being  explained  therein  the  diverse  applications  that  they  make 
of  the  mark ; 

2.  That,  to  manufacturers,  merchants,  agrarians  and  indus- 
trials that,  for  the  same  thing,  petition,  for  the  purpose  of  dis- 
tinguishing its  class  and  quality,  or  for  other  reason,  the  use 
of  different  marks,  although  similar,  there  shall  be  issued  a 
certificate  therefor  for  each  variation  that  the  mark  may  have, 
there  being  expressed  the  special  use  of  each  one  and  there 
being  required  therefor  the  payment  of  the  corresponding  fees 
($12.50,  legal  tender),  as  often  as  certificates  are  to  be  issued 
therefor ; 

3.  That,  to  manufacturers  that  petition  the  use  of  marks 
for  themselves  or  for  a  son  or  associate,  there  shall  be  issued 
as  many  certificates  as  there  are  marks;  but  by  expressing  the 
person  in  favor  of  whom  it  is  issued,  so  that,  in  case  of  separat- 

*  Articles  30  to  35  have  been  inapplicable  since  Cuban  independence. 


CUBA  203 

ing  from  his  father  or  his  associate,  it  be  known  that  the  mark 
belongs  to  him,  he  having  to  pay,  as  the  preceding  paragraph 
provides,  the  fees  established  for  each  one  of  the  certificates 
that  are  issued. 

TITLE  VI 

PUBLICATION  OF  MARKS,  DESIGNS  AND  INDUSTRIAL  MODELS; 
THEIR  DESCRIPTIONS,  DESIGNS  OR  FACSIMILES 

ART.  37.  The  Secretariat  of  Agriculture,  Commerce  and 
Labor  shall  arrange,  in  the  second  fortnight  of  the  months  of 
January,  April,  July,  and  October,  for  the  immediate  publica- 
tion in  the  Gaceta  Oficial  of  a  statement  of  all  the  titles  of 
ownership  of  marks,  designs  or  industrial  models  granted  dur- 
ing the  preceding  quarter,  there  being  expressed  clearly  the 
subject  matter  to  which  they  refer. 

The  Governors  of  the  Provinces  shall  order,  as  soon  as  the 
said  particulars  appear  in  the  Gaceta  Oficial,  that  they  be  repro- 
duced in  the  Boletines  Oficiales  or  periodicals  of  the  locality, 
and,  in  default  of  both,  by  means  of  announcements  posted  in 
customary  places. 

ART.  38.  The  descriptions  and  designs  of  marks,  and  de- 
signs and  industrial  models,  shall  be  at  the  disposition  of  the 
public  at  the  Secretariat  of  the  Economic  Society  during  the 
hours  that  the  President  of  the  same  shall  fix. 

TITLE  VII 

PENAL  DISPOSITIONS 

ART.  39.  There  shall  be  punished  by  the  Government  by 
fine  of  from  15  to  45  pesos,  without  prejudice  to  civil  and  crim- 
inal action  that  may  follow : 

1.  Those  that  shall  use  a  mark,  marks,  designs  or  industrial 
models,  without  having  obtained  the  corresponding  certificate 
of  ownership; 

2.  Those  that,  being  legitimate  owners  of  a  mark,  shall  ap- 
ply it  to  products  different  from  those  for  which  it  was  conceded ; 

3.  Those  that  shall  make  use  of  the  marks  of  the  producer 
on  goods  without  his  express  consent; 

4 

5.  Those  that  shall  make  use  of  a  transferred  mark  with- 
out having  taken  diligence  to  justify  the  transfer  within  the 
term  of  ninety  days. 

In  default  of  payment  the  infractor  shall  be  subject  to  a 
substituent  personal  responsibility  at  the  rate  of  one  day  for 
each  peso  of  fine. 

ART.  40.    There  shall  be  punished  with  a  fine  of  from  45 


204  CUBA 

to  135  pesos,  and,  in  default  of  payment,  with  the  personal  re- 
sponsibility that  the  final  paragraph  of  the  preceding  article 
establishes : 

1.  Repeaters  of  the  offense,  there  being  understood  as  such 
those  that  shall  have  been  punished  for  the  same  offense  during 
the  five  preceding  years ; 

2.  Those  that  shall  use  a  mark  prohibited  by  law. 

ART.  41.  There  shall  be  considered  as  comprised  within 
the  prescriptions  of  Art.  288  of  the  Penal  Code  those  that  shall 
use  marks  imitated  in  such  a  way  that  the  consumer  may  fall 
into  mistake  or  error,  confusing  them  with  the  true  or  legiti- 
mate ones. 

ART.  42.  Those  that  shall  vary,  without  due  authorization, 
in  whole  or  in  part,  the  mark,  design  or  industrial  model  of 
their  use,  shall  lose  the  right  that  they  have  thereto. 

ART.  43.  Actions  for  denouncing  infractions  of  this  De- 
cree shall  be  public. 

TITLE  VIII 

COMPETENCE  IN  TRADE  MARK  MATTERS 

ART.  44.  The  service  referring  to  ownership  of  marks,  de- 
signs and  industrial  models,  shall  be  in  charge  of  the  Secretariat 
of  Agriculture,  Commerce  and  Labor,  assisted  by  the  Govern- 
ments of  the  Provinces. 

The  said  Secretariat  of  Agriculture,  Commerce  and  Labor 
is  authorized : 

1.  To  decide  cases  regarding  the  concession  of  marks,  de- 
signs or  industrial  models  and  matters  thereto  appertaining, 
unless  they  relate  to  the  ownership,  or  to  some  of  the  actions 
that  the  Penal  Code  defines  as  crimes  and  misdemeanors; 

2.  To  issue  titles  of  ownership  of  marks,  designs  or  indus- 
trial models ; 

3.  To  oversee  the  service  and  the  registration  of  these; 

4.  To  declare  cases  in  which  there  shall  be  expedient  the 
correction  that  Arts.  39  and  40  indicate,  giving  notice  of  these 
and  officially  communicating  to  the  Governor  of  the  Province 
concerned  that  he  shall  carry  them  out,  remitting  within  the 
term  of  fifteen  days  the  amount  of  the  fines. 

Against  the  resolution  that  the  Secretariat  of  Agriculture, 
Commerce  and  Labor  shall  issue,  recourse  in  appeal  may  be  had 
to  the  President  of  the  Republic,  within  the  term  that  Art.  57 
of  the  Organic  Law  of  the  Executive  Power  determines;  and 
against  the  resolution  of  the  President,  contentious-administra- 
tive appeal  may  be  had  before  the  Civil  Chamber  and  that  of 
the  Contentious-Administrative  of  the  Audience  of  Habana,  in 


CUBA  205 

the  form  and  under  the  conditions  that  the  law  effective  in  the 
matter  provides. 

ART.  45.  Questions  that  shall  arise  regarding  the  owner- 
ship and  possession  of  marks  shall  be  of  the  competence  of  the 
ordinary  Tribunals,  without  there  being  incumbent  upon  the 
Administration,  in  case  of  litigation,  anything  other  than  to 
direct  that  there  be  shown  the  design  of  the  mark,  and  subse- 
quently to  acknowledge  the  right  of  ownership  of  the  mark  in 
him  that  shall  show  in  legal  form  to  have  obtained  it  through 
decision  of  the  Tribunals,  without  it  being  possible  to  declare 
the  caducity  of  the  mark  during  the  litigation. 

ART.  50.  The  Government  shall  publish  the  regulations 
necessary  for  the  execution  of  this  decree. 

ART.  51.  All  prior  dispositions  that  are  opposed  to  the 
execution  of  this  Royal  Decree  shall  be  derogated. 


DECREE  NO.  1238  OF  SEPTEMBER  9, 1915,  AS  MODIFIED 

BY  DECREE  NO.  225  OF  FEBRUARY  14,  1917,  AND 

DECREE  NO.  312  OF  FEBRUARY  28,  1917 

Whereas:  According  to  the  provisions  in  paragraph  1  of 
Art.  68  of  the  Constitution  of  the  Republic,  it  is  incumbent  on 
the  Executive  to  decree  the  provisions,  orders,  and  regulations 
necessary  for  the  better  execution  of  what  is  established  in 
the  laws; 

Whereas:  By  virtue  of  the  provision  in  paragraph  4  of  Art. 
12  of  the  Royal  Decree  of  August  21,  1884,  which  is  the  Organic 
Law  concerning  the  ownership  of  trade  marks,  whoever  in  ac- 
cordance with  its  provisions  obtains  the  corresponding  certifi- 
cate of  ownership  of  trade  marks,  industrial  designs  or  models, 
has  the  power  to  oppose  the  concession  of  certificates  of  those 
classes,  when  that  which  is  applied  for  is  like  that  of  his  owner- 
ship, or  has  with  it  the  likeness,  similarity,  or  features  sufficient 
to  deceive  the  buyer; 

Whereas:  The  exercise  of  this  right  of  opposition  is  not 
regulated  in  said  Royal  Decree  of  August  21,  1884,  nor  in  any 
of  our  qualifying  laws  referring  to  administrative  procedures; 

Whereas:  This  deficiency  is  easily  corrected,  by  having  ap- 
plications for  trade  marks,  industrial  designs  or  models  pub- 
lished, and  fixing  the  terms  within  which  oppositions  against 
the  same  may  be  brought  and  prosecuted. 

At  the  instance  of  the  Secretary  of  Justice, 

I  RESOLVE: 

1.    After  the  publication  of  this  Decree,  whenever  there  be 


206  CUBA 

solicited  in  the  Bureau  of  the  Secretary  of  Agriculture,  Com- 
merce, and  Labor,  by  means  of  the  opportune  formalities,  the 
concession  of  a  certificate  of  ownership  of  trade  marks,  indus- 
trial designs  or  models,  there  shall  forthwith  be  prepared  by 
the  Bureau  of  Trade  Marks  and  Patents  an  advertisement  giv- 
ing the  name  and  surname  of  the  applicant,  the  gist,  in  extract, 
of  the  application  for  trade  mark,  industrial  design  or  model, 
and  date  of  the  application,  for  the  purpose  of  proceeding  to 
its  publication  for  a  period  of  three  days  in  the  Gaceta  Oficial 
de  la  Republica,  in  which  it  shall  be  stated  that  the  conditions 
of  the  mark  are  to  be  published  with  greater  fullness  in  the 
Boletin  of  the  Bureau  of  the  Secretary  of  Agriculture,  Com- 
merce, and  Labor,  and  in  consequence  thereof  the  contents  of 
said  advertisement  shall  be  amplified  in  the  form  that  may  be 
deemed  expedient  by  the  Bureau  of  the  Secretary  of  Agricul- 
ture, Commerce,  and  Labor  in  the  Boletin  Oficial  of  the  same 
Department. 

2.  That  publication  shall  have  a  preferential  character, 
and,  counting  from  the  date  of  its  insertion  in  the  Boletin  Oficial, 
there  shall  be  granted  a  term  of  sixty  days,  to  the  end  that  the 
oppositions  that  are  established  in  paragraph  4  of  Art.  12  of 
the  Royal  Decree  of  August  21, 1884,  may  be  made,  or  any  other 
that  may  be  in  order;  in  any  case  the  cost  of  the  insertion  of 
the  advertisement  in  the  Gaceta  Oficial  shall  be  defrayed  by  him 
that  makes  the  application  for  the  issue  of  the  trade  mark  cer- 
tificate, for  which  purpose  the  official  announcement  shall  be 
delivered  to  the  party  interested. 

3.  An  opposition  being  presented  in  due  time  and  form, 
the  Bureau  of  the  Secretary,  considering  it  as  established,  shall 
hear,  if  it  deems  it  necessary,  the  opposer,  and  within  a  term 
that  it  shall  prudentially  indicate  and  as  early  as  possible,  it 
shall  proceed  with  those  investigations  that  it  esteems  pertinent, 
now  from  among  those  proposed  by  certain  of  the  parties,  again 
from  those  that  in  its  judgment  are  expedient,  and  shall  admit 
the  documents  that  may  be  presented  to  it.    Said  term  and  the 
extensions  that  the  Bureau  of  the  Secretary  may  have  deemed 
proper  to  grant  having  expired,  and  the  other  legal  steps  of  the 
case  being  carried  through,  the  resolution  that  corresponds 
shall  be  dictated,  which  likewise  shall  be  published  in  the  Gaceta 
Oficial. 

4.  In  every  proceeding  there  shall  be  produced  proof  of 
the  fulfillment  of  what  is  established  by  Art.  1,  by  means  of  the 
minutes  authorized  by  the  Chief  of  the  respective  Bureau,  in 
which  shall  be  stated  the  number  and  date  of  the  Gaceta  and 
of  the  Boletin  Oficial  in  which  the  advertisement  of  the  applica- 


CUBA  207 

tion  and  the  final  resolution  of  the  case  were  published. 

5.    This  Decree  shall  become  effective  from  the  date  of  its 
publication  in  the  Gaceta  Oficial.* 


CIVIL  ORDER  NO.  160 
HEADQUARTERS,  DEPARTMENT  OF  CUBA 

Habana,  June  13,  1901. 

Under  instructions  from  the  Secretary  of  War,  the  Military 
Governor  of  Cuba  directs  the  publication  of  the  following  order : 

1.  The  rights  of  property  in  patents,  copyrights,  and  trade 
marks,  duly  acquired  in  Cuba,  the  Isle  of  Pines,  and  the  Island 
of  Guam,  pursuant  to  the  provisions  of  Spanish  law  and  exist- 
ing in  one  or  all  of  said  islands  on  April  11,  1899,  shall  continue 
unimpaired  for  the  period  for  which  they  were  granted,  and 
the  owner  or  owners  thereof  shall  be  protected  and  their  rights 
therein  maintained :  Provided,  That  the  original  or  a  duly  cer- 
tified copy  of  the  patent,  or  of  the  certificate  of  registration  of 
the  trade  mark  or  copyright,  is  filed  in  the  office  of  the  Governor 
of  the  island  wherein  such  protection  is  desired. 

The  certificates  of  registration  of  trade  marks  issued  prior 
to  April  11,  1899,  by  a  Spanish  provincial  registry  or  the  Na- 
tional Registry  of  Spain  at  Madrid,  or  the  International  Regis- 
try at  the  Bureau  of  the  Union  for  the  Protection  of  Industrial 
Property,  at  Berne,  Switzerland,  shall  receive  such  recognition 
and  credence  as  were  accorded  them  in  said  islands  under 
Spanish  sovereignitv ;  and  an  original  certificate  or  duly  cer- 
tified copy  thereof  shall  be  received  and  filed  in  the  office  of  the 
Governor  of  the  island  for  all  purposes  connected  with  this 
order  without  further  or  other  certification. 

2.  The  rights  of  property  in  patents,  including  design 
patents  granted  by  the  United  States,  and  in  trade  marks,  prints, 
and  labels  duly  registered  in  the  United  States  Patent  Office, 
and  in  copyrights  duly  registered  in  the  office  of  the  Librarian 
of  Congress,  shall  be  maintained  and  protected  by  the  govern- 
ment of  civil  affairs  in  the  islands  above  named :  Provided,  That 
a  duly  certified  copy  of  the  patent,  or  of  the  certificate  of  regis- 
tration of  the  copyright,  trade  mark,  print,  or  label,  is  filed  in 
the  office  of  the  Governor  of  the  island  wherein  such  protection 
is  desired. 

3.  An  infringement  of  the  rights  protected  by  compliance 
with  the  provisions  of  this  order  shall  subject  the  person,  firm, 
association,  or  corporation  guilty  of  such  infringement  to  the 

*  Published  in  Gaceta  Oficial,  February  16,  1917. 


208  CUBA 

civil  and  penal  liabilities  created  and  imposed  by  such  of  the 
laws  of  Spain  relating  to  said  matters  as  remain  in  force  in 
said  islands. 

4.  Such  provisions  of  existing  orders  as  are  in  conflict 
with  this  order  are  hereby  revoked. 

[Signed]     EDWARD  CARPENTER, 
First  Lieutenant,  Artillery  Corps,  Aid-de-Camp. 

SECRETARIAT  OF  AGRICULTURE,  COMMERCE  AND  LABOR 

Habana,  June  21,  1902. 

The  military  government  of  the  United  States  in  this 
island  having  ceased,  by  virtue  whereof  and  in  accordance  with 
the  express  text  thereof,  circulars  Nos.  12  and  21,  dated,  re- 
spectively, April  11  and  June  1,  1899,  issued  by  the  Division  of 
Customs  and  Insular  Affairs  of  the  War  Department  at  Wash- 
ington, concerning  the  registration  of  American  trade  marks 
.  .  .  have  become  without  value  or  effect,  inasmuch  as  said 
circulars  were  issued  for  the  territories  subject  to  military 
forces  of  the  United  States,  I  have  resolved  that  .  .  .  marks  of 
all  kinds,  prints,  labels,  and  tickets,  duly  registered  in  the  Patent 
Office  of  the  United  States,  whose  filing  in  this  island  may  be 
requested  for  their  protection  in  future,  shall  from  the  present 
date  be  recorded  in  the  bureau  under  my  charge  in  proper  case, 
upon  complying  with  the  procedure  followed  for  registration 
from  other  countries,  and  the  payment  of  ...  $12.50  currency 
for  marks,  prints,  etc. — that  is  to  say,  the  same  fees  which  are 
paid  by  all  others,  foreign  or  national,  in  place  of  $1  currency, 
which  is  provided  for  in  said  circular  No.  21,  regarding  the 
American. 


CURACAO 

ROYAL  ORDINANCE  (REGULATION  FOR  INDUSTRIAL 
PROPERTY  IN  THE  COLONIES,  1912)  OF  AUG.  29, 1912 

ABTICLE  1.  (1)  The  Department  of  Agriculture,  Industry 
and  Commerce  in  the  Dutch  Indies  is  charged,  as  Auxiliary 
Bureau  of  the  Bureau  of  Industrial  Property,  created  by  Art. 
1  of  the  Trade  Mark  Law,*  with  the  supervision  of  industrial 
property  in  the  Dutch  Indies;  in  Surinam  and  in  Curasao  the 
office  of  the  Procurer-General  of  the  Court  of  Justice  of  these 
colonies  is  charged  with  this  service. 

(2)  The  Auxiliary  Bureau  is  at  the  same  time  conservator 
of  marks  deposited,  and  is  charged  with  the  publication  of  the 
marks  of  manufacture  and  of  commerce  in  the  colony  in  which 
it  is  established. 

(3)  The  Auxiliary  Bureau  shall  furnish  to  the  Bureau  of 
The  Hague  all  the  data  concerning  industrial  property  that  this 
latter  shall  require  of  it. 

ART.  2.  (1)  In  the  Dutch  Indies,  in  Surinam,  and  in 
Curagao,  the  right  to  the  exclusive  use  of  a  mark  intended  to 
distinguish  the  products  of  the  industry  or  trade  of  one  person 
from  those  of  others  belongs  to  him  that  first  in  the  Kingdom 
in  Europe,  in  the  Dutch  Indies,  in  Surinam,  or  Curasao,  shall 
have  made  use  of  this  mark  for  the  purpose  indicated ;  but  this 
solely  in  whatever  concerns  the  class  of  goods  for  which  the 
mark  shall  have  been  used,  and  provided  that  the  last  use  has 
not  been  made  more  than  three  years  before. 

(2)  Save  proof  to  the  contrary,  and  subject  to  the  provi- 
sions of  the  following  paragraph,  he  that  first  shall  have  satis- 
fied the  provisions  of  Art.  4  shall  be  considered  as  having  been 
the  first  to  make  use  of  the  mark  deposited. 

(3)  He  that  shall  have  deposited  a  mark  in  the  Auxiliary 
Bureau  of  Industrial  Property  within  the  term  of  four  months 
after  he  shall  have  effected  the  regular  deposit,  agreeable  to 
Art.  6  of  the  Convention  of  Paris  of  March  20,  1883,  for  the 
protection  of  industrial   property    (Nederlandsch  Staatsblad, 
1884,  No.  189 ;  Indisch  Staatsblad,  1888,  No.  188 ;  Gouvernements- 
blad  van  Suriname,  1890,  No.  8 ;  and  Publicatieblad  van  Curagdo, 
1890,  No.  3),  in  one  of  the  countries  that  have  ratified  the  said 
Convention,  shall  be  considered  as  having  made  use  of  the  mark 
from  the  commencement  of  this  term  in  the  colony  in  which  the 

*  For  translation  of  the  Dutch  trade  mark  law  referred  to  see  The  Netherlands. 


210  CURACAO 

Auxiliary  Bureau  is  located. 

(4)  He  that,  within  the  six  months  following  the  opening 
of  an  international  exposition,  official  or  officially  recognized, 
within  the  territory  of  one  of  the  countries  adherent  'to  the  said 
International  Convention  of  Paris,  shall  have  deposited  with 
the  Auxiliary  Bureau  of  Industrial  Property  a  mark  under 
which  articles  of  his  trade  or  of  his  industry  have  been  exhibited 
at  this  exposition,  in  order  to  be  registered  according  to  Art.  4 
for  the  same  class  of  goods,  shall  be  considered  as  having  made 
use  of  this  mark  within  the  colony  in  which  the  Auxiliary  Bureau 
is  established,  from  the  day  on  which  it  has  figured  in  the  expo- 
sition as  a  distinctive  sign  of  his  products  of  the  same  class.  As 
proof  of  the  day  on  which  the  mark  has  thus  figured  in  the 
exposition,  the  Auxiliary  Bureau  of  Industrial  Property  may 
require  the  production  of  a  certified  declaration  from  the  admin- 
istration of  the  exposition  or  from  any  qualified  person  or 
authority  approved  by  it. 

ART.  3.  The  registration  of  one  mark  in  the  name  of  sev- 
eral owners  is  authorized  only  if  they  all  jointly  have  a  share  in 
the  industry  or  commercial  establishment  whose  products  the 
mark  is  destined  to  distinguish. 

The  Auxiliary  Bureau  of  Industrial  Property  may  require, 
as  proof  of  this  fact,  the  deposit  of  a  certified  extract  of  the 
instrument  establishing  the  joint  right  whereof  there  is  question. 

ART.  4.  (1)  In  order  to  obtain  the  registration  of  a  mark, 
the  party  interested  shall  deposit  with  the  Auxiliary  Bureau  of 
Industrial  Property  that  is  found  within  the  colony  in  which  it 
is  desired  to  register  his  mark  a  cut  (cliche),  corresponding  to 
the  mark,  having  a  length  and  a  width  of  at  least  1.5,  and  at  most 
10  centimetres,  and  a  thickness  of  2.4  centimetres,  in  addition  to 
two  signed  copies  of  a  distinct  reproduction  of  his  mark  and  an 
exact  description  agreeing  with  this  latter.  This  description 
should  mention,  in  addition,  the  class  of  goods  for  which  the 
mark  is  intended,  as  well  as  the  full  name  and  the  domicile  of 
the  depositor.  If  the  description  designates  the  color  as  a  dis- 
tinctive element  of  the  mark,  the  depositor  shall  place  at  the 
disposition  of  the  Auxiliary  Bureau  the  number  of  reproduc- 
tions in  color  of  the  mark  that  shall  be  determined  by  this  latter. 

(2)  The  deposit  may  also  be  made  by  a  person  authorized 
in  writing. 

(3)  The  mark  shall  not  contain  words  or  representations 
contrary  to  good  morals  or  by  which  the  use  of  the  mark  might 
be  harmful  to  public  order.    It  shall  not  contain  the  arms  or 
seal,  even  slightly  modified,  of  a  public  law  department. 

(4)  On  the  deposit,  there  shall  be  payable  for  each  mark  a 


CURACAO  211 

fee  of  ten  florins  which  shall  in  no  case  be  refunded. 

ART.  5.  (1)  "Within  the  eight  days  that  follow  that  of  its 
filing,  the  mark,  deposited  according  to  the  preceding  article, 
shall  be,  subject  to  the  provisions  of  Art.  9,  registered  by  the 
Auxiliary  Bureau  of  Industrial  Property  in  the  public  register 
provided  for  this  purpose,  whose  model  agrees  with  that  estab- 
lished, according  to  Art.  5  of  the  trade  mark  law,  by  the  Min- 
ister charged  with  the  execution  of  the  said  law. 

(2)  The  two  facsimiles  deposited  of  the  reproduction  and 
of  the  description  shall  be  certified,  with  the  addition  of  the 
date  and  the  number  under  which  the  inscription  in  the  register 
shall  have  been  effected. 

(3)  One  of  these  facsimiles  shall  be  returned  to  the  deposi- 
tor within  the  three  days  that  follow. 

(4)  In  the  case  provided  in  the  second  paragraph  of  Art. 
4  the  power  shall  be  attached  to  the  other  facsimile. 

ART.  6.  (1)  The  Auxiliary  Bureau  of  Industrial  Property 
shall  publish  in  the  Dutch  Indies  in  the  next  following  number 
of  the  journal,  the  Javasche  Courant,  monthly;  in  Surinam  and 
in  Curasao  in  the  next  following  number  of  the  journal  appear- 
ing monthly,  wherein  official  notices  are  published,  the  descrip- 
tions, mentioned  in  Art.  4,  of  the  marks  registered  since  the  last 
publication,  each  with  the  reproduction  of  the  corresponding 
cliche,  by  indicating  the  class  of  goods  for  which  these  marks 
are  intended,  as  well  as  the  full  name  and  the  domicile  of  the 
depositors. 

(2)  These  publications  shall  be  made  in  the  special  supple- 
ments of  the  Courant  or  of  the  journal,  which  may  be  obtained 
separately.  After  this,  the  cliche  shall  be  returned  to  the  de- 
positor on  his  request. 

ART.  7.  (1)  Residents  of  the  Dutch  Indies,  of  Surinam  or 
of  Curacjao,  as  well  as  non-residents  that  have  there  a  serious 
commercial  or  industrial  establishment,  effectively  serving  in 
the  exercise  of  industry  or  commerce,  who  desire  to  secure  for 
themselves  in  other  countries  adherent  to  the  Arrangement 
approved  by  the  law  of  Dec.  12, 1892,  (N ederlandsch  Staatsblad, 
No.  270;  Indisch  Staatsblad,  1893,  No.  99;  Gouvernementsblad 
van  Suriname,  1893,  No.  8,  and  Publicatieblad  van  Curagdo, 
1893,  No.  2)  and  concluded  at  Madrid,  April  14,  1891,  the  pro- 
tection of  the  mark  deposited  by  them  in  conformity  with  Art. 
4,  for  the  same  class  of  goods,  shall  forward  to  the  Auxiliary 
Bureau  of  Industrial  Property  in  the  colony,  in  which  they  are 
domiciled  or  possess  a  commercial  or  industrial  establishment, 
four  additional  facsimiles,  of  which  one  shall  be  signed,  of  a 
distinct  reproduction  of  the  mark,  a  description  of  the  kind  of 


212  CURACAO 

goods  for  which  the  mark  is  intended,  drawn  up  in  French  and 
signed  by  them,  and  a  cliche  agreeing  with  the  provisions  of  the 
preceding  article.  If  the  color  of  the  mark  constitutes  a  dis- 
tinctive element  of  this  last,  the  depositor  shall  make  mention 
thereof  in  a  detailed  description  of  the  mark,  signed  by  him, 
which  he  shall  include  with  the  deposit;  and  he  shall  place  at 
the  disposal  of  the  Auxiliary  Bureau  of  Industrial  Property 
the  number  of  facsimiles  in  color  that  this  latter  shall  have 
determined. 

(2)  The  second  paragraph  of  Art.  4  shall  be  applicable 
thereto. 

(3)  On  the  deposit,  there  shall  be  payable,  for  one  mark 
the  sum  of  sixty  florins,  and  for  each  of  the  following  marks, 
filed  at  the  same  time  as  the  first  by  the  same  owner  or  in  his 
name,  the  sum  of  thirty  florins.    The  sums  thus  paid  shall  in  no 
case  be  refunded. 

(4)  If  the  mark  deposited  by  virtue  of  Art.  4  has  not  been 
registered  in  accordance  with  Art.  5,  the  Auxiliary  Bureau  of 
Industrial  Property  shall  notify  the  depositor  that  the  appli- 
cation for  registration  with  the  International  Bureau  at  Berne 
cannot  take  place  for  the  time  being. 

(5)  If  the  mark  has  been  registered  according  to  Art.  5, 
or  as  soon  as  it  shall  be,  the  Auxiliary  Bureau  of  Industrial 
Property  shall  forward,  including  therewith  the  sum  of  sixty 
florins  for  the  first  mark  and  thirty  florins  for  each  of  the  fol- 
lowing marks  deposited  at  the  same  time  as  the  first  by  the  same 
owner  or  in  his  name,  the  three  unsigned  facsimiles  of  the  repro- 
duction mentioned  in  the  foregoing  first  paragraph,  with  the 
description  there  provided  of  the  class  of  goods  for  which  the 
mark  is  intended,  drawn  up  in  French  and  signed  by  the  depos- 
itor, and,  in  the  case  provided  in  the  last  phrase  of  the  first 
paragraph  of  the  present  article,  the  number  of  impressions 
of  the  mark  in  color  fixed  by  the  Bureau  at  The  Hague,  to  this 
latter  Bureau,  which  shall  proceed  without  delay  with  the  appli- 
cation for  registration  at  the  International  Bureau  at  Berne. 

(6)  The  Auxiliary  Bureau  shall  keep  the  signed  facsimile 
of  the  reproduction,  which  it  shall  certify  as  correct. 

(7)  The  Bureau  of  The  Hague  shall  without  delay  notify 
the  Auxiliary  Bureau  of  all  the  International  Bureau  has  com- 
municated to  it  on  the  subject  of  the  mark,  and  the  Auxiliary 
Bureau  shall  advise  the  depositor  thereof  in  so  far  as  it  is 
deemed  that  these  communications  may  interest  him. 

(8)  The  Bureau  of  The  Hague  shall  return,  in  addition,  to 
the  Auxiliary  Bureau,  the  copy  of  the  application  for  registra- 
tion that  shall  have  been  returned  to  it  by  the  International 


CURACAO  213 

Bureau  at  Berne. 

ART.  8.  (1)  When  the  Bureau  of  The  Hague  shall  have 
received  from  the  International  Bureau  at  Berne,  in  conformity 
with  Art.  3  of  the  Arrangement  of  Madrid  modified  by  the 
Additional  Act  signed  at  Brussels  Dec.  14,  1900,  and  approved 
by  the  Law  of  June  7,  1902  (Nederlandscli  Staatsblad,  No.  85; 
Indisch  Stattsblad,  No.  377 ;  Gouvernementsblad  van  Suriname, 
No.  22,  and  Publicatieblad  van  Curasao,  No.  37),  a  notification 
concerning  the  international  registration  of  a  deposited  mark, 
in  the  tenor  of  Art.  7  of  the  present  decree,  at  an  Auxiliary 
Bureau,  or  of  a  foreign  mark,  it  shall  transmit  without  delay  to 
the  interested  Auxiliary  Bureau  a  certified  copy  of  this  notifi- 
cation, and  this  latter  shall  record  the  mark,  subject  to  the  pro- 
visions of  Art.  9,  and  within  eight  days  after  the  receipt  of  the 
notification,  in  the  public  register  for  this  purpose,  whose  model 
is  identical  with  that  provided,  according  to  Art.  8  of  the  trade 
mark  law,  by  the  Minister  charged  with  the  execution  of  the 
said  law. 

(2)  The  copy  of  the  notification  received  shall  be  certified, 
with  the  addition  of  the  date  and  of  the  number  under  which 
the  inscription  in  the  register  shall  have  been  effected. 

(3)  If  the  internationally  registered  mark  has  been  depos- 
ited according  to  Art.  7  in  the  Auxiliary  Bureau  of  Industrial 
Property,  this  latter  shall  as  soon  as  possible  give  notice  to  the 
depositor  concerning  the  international  registration,  and  shall 
deliver  to  him  a  dated  certificate  concerning  the  registration 
mentioned  in  the  first  paragraph  of  the  present  article. 

(4)  The  supplement  of  the  journal  of  the  International 
Bureau  at  Berne  in  which  are  published  the  internationally 
registered  marks  may  be  obtained  from  the  Auxiliary  Bureau, 
to  which  the  Bureau  of  The  Hague  shall  remit,  for  this  purpose, 
the  requisite  number  of  copies. 

(5)  The  placing  of  this  journal  at  the  disposition  of  the 
public  shall  be,  each  time,  the  subject  of  a  communication  in  the 
Courant,  or  in  the  journals  mentioned  in  Art.  6. 

ART.  9.  (1)  If  the  mark,  deposited  in  accordance  with  Art. 
4,  or  the  foreign  mark,  mentioned  in  Art.  8,  agrees  absolutely 
or  in  its  essential  elements  with  that  registered  in  the  name  of 
another,  or  deposited  previously  by  another  for  the  same  class 
of  goods,  or  if  it  is  contrary  to  the  provisions  of  the  next  to  the 
last  paragraph  of  Art.  4,  the  Auxiliary  Bureau  of  Industrial 
Property  may  refuse  its  registration ;  it  shall  give  notice  of  this 
refusal  to  the  depositor  in  writing,  with  indication  of  the  rea- 
sons, within  the  eight  days  that  follow  the  deposit  of  the  mark, 
or  as  soon  as  possible  after  having  received  the  notification 


214  CURACAO 

addressed,  according  to  the  terms  of  Art.  8,  to  the  Bureau  at 
The  Hague,  which  will  communicate  the  refusal  to  the  Inter- 
national Bureau  at  Berne. 

(2)  The  depositor,  with  whom  Art.  4  is  concerned,  or  the 
one  of  the  mark  mentioned  in  Art.  8,  may  address — in  the  Dutch 
Indies  to  the  Raad  van  Justitie  at  Batavia,  in  Surinam  or  in 
Cura§ao  to  the  Hof  van  Justitie — a  petition  signed  by  himself 
or  by  his  attorney,  to  the  end  of  having  the  registration  ordered. 
This  petition  shall  be  presented  by  the  depositor  whereof  Art. 
4  treats  within  the  three  months  that  follow  the  hereinbefore 
mentioned  notice,  and,  by  the  depositor  of  the  mark  mentioned 
in  Art.  8,  within  the  six  months  that  follow  said  notice. 

ABT.  10.  (1)  If  the  mark,  registered  in  accordance  with 
Art.  5,  or  the  foreign  mark,  registered  in  accordance  with 
Art.  8,  agrees  entirely  or  in  its  essential  details  with  a  mark  to 
which  another  person  has  the  right,  by  virtue  of  Art.  3,  for  the 
same  class  of  goods,  or  contains  the  name  or  commercial  desig- 
nation to  which  another  has  the  right,  this  latter,  who  claims 
this  right,  may,  without  prejudice  to  other  legal  means  that  are 
at  his  disposal,  address — in  the  Dutch  Indies  to  the  Raad  van 
Justitie,  in  Surinam  or  in  Curasao  to  the  Hof  van  Justitie — 
a  petition  signed  by  himself  or  by  his  attorney,  to  the  end  of 
having  declared  the  nullity  of  the  resignation ;  this  petition  shall 
be  presented,  in  whatever  concerns  a  mark  registered  in  accord- 
ance with  Art.  5,  within  the  nine  months  that  follow  the  publi- 
cation prescribed  by  Art.  6,  and  in  whatever  concerns  a  foreign 
mark  registered  in  accordance  with  Art.  8,  within  the  nine 
months  that  follow  the  communication  prescribed  at  the  end  of 
this  article. 

(2)  The  owner,  of  whom  mention  is  made  in  the  first  para- 
graph, after  the  expiration  of  the  term  that  is  there  indicated, 
may  also  petition  in  the  same  manner  the  nullification  of  the 
registration,  when  his  right  shall  result  from  a  judicial  decision. 

(3)  During  the  term  fixed  by  the  first  paragraph,  the  Public 
Minister  may,  if  the  mark  is  contrary  to  the  provisions  of  the 
next  to  the  last  paragraph  of  Art.  4,  petition  the  judicial  col- 
leges designated  in  the  first  paragraph  that  the  registration  be 
declared  void. 

ART.  11.  The  clerk  shall  within  three  days  give  notice  in 
writing  to  the  Auxiliary  Bureau  of  Industrial  Property  of  every 
petition  in  accordance  with  Arts.  8  and  10,  and  of  every  demand 
made  by  the  Public  Minister  in  conformity  with  Art.  10. 

ABT.  12.  (1)  The  judicial  colleges  designated  in  the  last 
paragraph  of  Art.  9  and  in  the  first  paragraph  of  Art.  10  shall 
decide  in  council  chamber. 


CUEACAO  215 

(2)  There  shall  be  no  decision  concerning  a  petition  made 
by  virtue  of  Art.  9,  until  after  the  petitioner  and  the  Director 
of  the  Bureau  of  Industrial  Property,  respectively,  shall  have 
been  given  opportunity  to  orally  sustain  before  the  judicial  col- 
lege the  right  to  registration  of  the  mark,  and  the  reasons  that 
militate  in  favor  of  the  refusal  of  registration.    The  petition 
and  the  simple  taking  into  consideration  by  which  the  judicial 
college  has  thereto  responded  in  order  to  fix  the  day  for  hear- 
ing shall  be  made  known  to  the  Chief  of  the  Auxiliary  Bureau 
by  the  petitioner  within  the  term  of  fourteen  days  after  the 
order  shall  have  been  issued. 

(3)  There  shall  be  no  decision  on  a  petition  or  an  applica- 
tion made  by  virtue  of  Art.  10  until  after  the  regular  hearing 
or  citation  of  the  depositor  of  the  mark  on  the  date  fixed  by  the 
judicial  college  at  the  time  of  the  simple  taking  into  considera- 
tion of  the  petition  or  application ;  the  clerk  shall  give  advice  in 
writing  of  this  date  to  the  Auxiliary  Bureau  of  Industrial  Prop- 
erty; and  if  it  is  a  matter  of  a  mark  registered  in  accordance 
with  Art.  5,  notice  shall  be  given  to  the  applicant  by  notification, 
emanating  from  the  petitioner  or  from  the  Public  Minister,  of 
the  petition  or  application  and  of  the  taking  into  consideration 
that  has  followed  the  same,  and  this  within  the  term  of  fourteen 
days  counting  from  the  signing  of  this  latter. 

(4)  If  it  is  a  matter  of  a  mark  registered  in  accordance 
with  Art.  8,  the  Auxiliary  Bureau  of  Industrial  Property  shall 
give  notice  of  the  petition  or  application  to  the  Bureau  of  The 
Hague;  it  shall  communicate  as  soon  as  possible  to  this  latter 
the  date  that  the  judicial  college  shall  have  fixed  for  the  hear- 
ing, and  this  at  least  three  months  in  advance. 

(5)  The  Bureau  of  The  Hague  shall  immediately  communi- 
cate the  whole  to  the  International  Bureau  at  Berne. 

(6)  At  the  hearing,  the  petitioner,  and,  in  the  case  provided 
in  the  second  paragraph  of  Art.  10,  the  Public  Minister,  may 
orally  expound  the  reasons  serving  as  basis  for  the  petition  or 
application. 

(7)  Before  the  adjournment  of  the  hearing  prescribed  by 
the  present  article,  the  judge  shall  fix  the  date  on  which  he  will 
pronounce  judgment. 

ART.  13.     (1)  Appeal  against  the  decision  is  not  admissible. 

(2)  In  the  Dutch  Indies  (not  in  Surinam  or  in  Curasao), 
an  appeal  in  cassation  may  be  made  within  the  term  of  one 
month  counting  from  the  date  of  the  decision  of  the  Court.  If 
it  is  a  matter  of  a  mark  deposited  agreeable  to  Art.  4,  or  regis- 
tered in  accordance  with  Art.  5,  the  petition  relative  thereto 
shall  be  made  known  to  the  adverse  interested  party. 


216  CURACAO 

(3)  If  the  appeal  is  for  the  purpose  of  having  the  registra- 
tion of  a  mark  ordered,  the  Auxiliary  Bureau  of  Industrial 
Property  in  the  Dutch  Indies  shall  be  considered  as  the  adverse 
interested  party. 

(4)  The  clerk  of  the  High  Court  of  the  Dutch  Indies  shall 
give  notice  in  writing  within  three  days  to  the  Auxiliary  Bureau 
of  Industrial  Property  concerning  any  other  appeal  in  cassation 
not  emanating  from  this  Bureau. 

(5)  If  the  appeal  in  cassation  concerns  one  of  the  marks  of 
which  mention  is  made  in  Art.  8,  the  Auxiliary  Bureau  shall 
communicate  it  to  the  Bureau  of  The  Hague,  which  shall  give 
notice  thereof  to  the  International  Bureau  at  Berne. 

ABT.  14.  (1)  He  that  has  no  domicile  in  the  colony  shall 
make  election  of  an  address  for  service  within  the  colony  at  the 
time  of  the  deposit  mentioned  in  Arts.  4  or  7,  and  at  the  time 
of  the  sending  of  one  of  the  petitions  presented  in  accordance 
with  Arts.  9,  10  or  13. 

(2)  All  proceedings  shall  be  directed  to  the  address  chosen. 

ART.  15.  (1)  The  clerk  shall  give  notice  in  writing  to  the 
Auxiliary  Bureau  of  Industrial  Property,  within  three  days,  of 
the  decision  rendered  by  the  Raad  van  Justitie  at  Batavia  or  by 
the  Hof  van  Justitie  in  Surinam  or  in  Curasao. 

(2)  Like  notice  shall  be  given  in  the  Dutch  Indies  by  the 
clerk  of  the  High  Court  in  whatever  concerns  the  issue  of  the 
appeal  in  cassation. 

(3)  In  accordance  with  the  decision  of  the  Tribunal,  having 
acquired  the  force  of  a  res  adjudicata,  or  agreeable  to  the  de- 
cision of  the  High  Court  in  the  Dutch  Indies,  when  this  latter 
shall  have  given  final  judgment,  the  Auxiliary  Bureau  shall 
register  the  mark  or  take  note  of  the  avoidance  of  the  registra- 
tion in  the  reserve  column  of  the  public  register  wherein  the 
mark  shall  have  been  recorded. 

(4)  The  registration  shall  then  be  considered  as  having 
taken  place  on  the  date  of  the  deposit  or  on  that  of  the  receipt 
of  the  notification  mentioned  in  Art.  8. 

(5)  The  Auxiliary  Bureau  shall  communicate  to  the  Bureau 
of  The  Hague  the  notices  prescribed  by  the  present  article,  if 
they  concern  one  of  the  marks  mentioned  in  Art.  8,  as  soon  as 
the  decision  shall  have  the  force  of  a  res  adjudicata. 

(6)  The  said  Bureau  of  The  Hague  shall  notify  as  promptly 
as  possible  the  International  Bureau  at  Berne. 

ABT.  16.  (1)  The  Auxiliary  Bureau  of  Industrial  Property 
shall  publish: 

1)  The  refusal  of  registration  of  a  mark,  mentioned  in  Art. 
8,  as  soon  as  the  term  established  in  the  second  paragraph  of 


CURACAO  217 

Art.  9  shall  be  expired  without  the  petition  provided  in  this 
article  having  been  filed,  or  as  soon  as  a  decision  rejecting  this 
petition  shall  have  the  force  of  a  res  adjudicata; 

2)  The  annulling  of  the  registration  of  a  mark  whose  de- 
scription shall  already  have  been  published  in  accordance  with 
Art.  6,  or  whose  international  registration  shall  already  have 
been  announced  in  the  supplement  of  the  journal  of  the  Inter- 
national Bureau  at  Berne; 

3)  The  forfeiture  of  a  registration  for  any  of  the  reasons 
indicated  in  Art.  18,  Sees.  1  or  3 ; 

4)  The  assignment,  recorded  in  conformity  with  Art.  20,  of 
a  mark  registered  in  accordance  with  Art.  5. 

(2)  The  publications  prescribed  in  the  present  article  shall 
be  made  in  the  special  supplements  mentioned  in  the  last  para- 
graph of  Art.  6. 

ART.  17.  (1)  The  public  registers  mentioned  in  Arts.  5 
and  8  may  be  consulted  by  any  person  without  charge  in  the 
offices  of  the  Auxiliary  Bureau  of  Industrial  Property. 

(2)  Any  person  may  obtain,  at  his  own  expense,  an  extract 
or  a  copy,  whereof  the  cost  shall  be  calculated,  in  the  Dutch 
Indies,  on  the  basis  of  Art.  7  of  the  charges  for  judicial  expenses 
and  emoluments  in  civil  matters  for  the  European  tribunals, 
and  in  Surinam  and  in  Curasao  on  the  basis  of  Art.  20  of  the 
charges  for  judicial  expenses  and  emoluments  in  civil  matters. 

(3)  On  payment  of  the  sum  of  50  cents,  payable  preferably 
by  means  of  a  stamp  delivered  by  the  Auxiliary  Bureau  of  In- 
dustrial Property,  in  accordance  with  the  model  prescribed  for 
the  Bureau  of  The  Hague,  any  person  may  receive  a  written 
reference  concerning  the  contents  of  the  public  registers  of  the 
Auxiliary  Bureau  mentioned  in  Arts.  5  and  8. 

ART.  18.     (1)  A  registration  shall  cease  to  be  of  effect: 

1)  By  the  cancellation  made  on  application  of  any  person 
in  whose  name  the  registration  has  been  made,  or  of  any  person 
in  whose  name  the  assignment  has  been  recorded  in  accordance 
with  Art.  20; 

2)  By  the  expiration  of  twenty  years  counting  from  the  day 
on  which  the  registration  took  place,  in  accordance  with  Arts. 
5  or  8,  if  this  registration  has  not  been  renewed  before  the 
expiration  of  this  term,  or  if  the  renewal  has  not  been  repeated 
within  like  term ; 

3)  By  the  forfeiture  or  refusal  of  registration  in  the  coun- 
try of  origin; 

4)  On  Dec.  31,  1913,  for  all  marks  registered  that  contain, 
even  slightly  altered,  the  name  or  insignia  of  the  "Red  Cross," 
called  also  the  "Geneva  Cross." 


218  CURACAO 

(2)  The  annulment  of  the  registration  for  any  of  the  rea- 
sons mentioned  under  Sees.  1  or  3  shall  be  entered,  with  indica- 
tion of  the  reasons,  in  the  column  for  this  purpose  of  the  public 
register  wherein  the  mark  was  recorded. 

ART.  19.  (1)  In  order  to  secure  the  renewal  of  a  mark,  reg- 
istered in  conformity  with  Art.  5,  the  owner  shall  fulfill,  before 
the  expiration  of  the  term  indicated  under  section  2  of  the  pre- 
ceding article,  the  same  formalities  as  those  indicated  in  Art.  4 
for  the  first  deposit. 

(2)  The  copies  filed,  with  which  the  first  paragraph  of  Art. 
4  is  concerned,  shall  be  certified,  along  with  the  date  of  renewal. 

(3)  The  Auxiliary  Bureau  of  Industrial  Property  shall  pro- 
ceed to  the  renewal  of  the  registration  by  inserting  the  date  in 
the  column  for  this  purpose  of  the  public  register  wherein  the 
mark  has  been  recorded. 

(4)  After  the  renewal  of  the  registration  of  a  mark  regis- 
tered in  conformity  with  Art.  5,  there  shall  be  delivered  to  the 
owner,  within  three  days,  one  of  the  copies  mentioned  in  the 
second  paragraph  of  the  present  article. 

(5)  The  fourth  paragraph  of  Art.  5  and  Art.  6  shall  in  addi- 
tion be  applicable  to  this  mark. 

(6)  If  it  is  a  matter  of  a  mark  deposited  in  view  of  the 
renewal  of  registration  and  of  the  fulfillment  of  the  formalities 
indicated  in  Art.  7,  there  will  be  occasion  to  apply  the  third  and 
fourth  paragraphs  of  the  said  article. 

(7)  The  renewal  of  a  mark  registered  in  the  tenor  of  Art. 
8  cannot  take  place  until  after  the  Bureau  of  The  Hague  shall 
have  transmitted  the  copy,  mentioned  in  this  article,  of  the  pub- 
lication provided  by  Art.  3  of  the  Arrangement  of  Madrid.  This 
copy  of  the  publication  shall  be  legalized,  with  the  addition  of 
the  date  on  which  the  renewal  has  been  recorded. 

(8)  In  the  case  of  renewal  of  registration  in  the  Dutch 
Indies,  in  Surinam,  or  in  Curasao,  of  an  international  mark  reg- 
istered anew  that  has  been  deposited  in  conformity  with  Art.  7 
with  the  Auxiliary  Bureau  of  Industrial  Property  of  the  colony 
interested,  there  shall  be  delivered  to  the  owner,  as  soon  as  pos- 
sible, a  certificate  with  date. 

(9)  In  cases  of  renewal,  the  second  and  third  paragraphs 
of  Art.  10  and  the  other  articles  of  the  present  ordinance  shall 
be  held  applicable. 

(10)  The  Auxiliary  Bureau  may  refuse  to  register  the  re- 
newal when  the  mark  is  contrary  to  the  provisions  of  the  next 
to  the  last  paragraph  of  Art.  4,  and,  in  this  case,  it  shall  proceed 
in  the  manner  prescribed  in  the  first  paragraph  of  Art.  9 ;  after 


CURACAO  219 

this,  the  second  paragraph  of  Art.  9,  Art.  11,  and  the  other 
articles  of  the  present  ordinance  shall  be  held  applicable. 

ART.  20.  (1)  The  assignment  to  a  third  party  of  a  mark 
registered  in  accordance  with  Art.  5  shall  be  registered  only  if 
the  industrial  or  commercial  establishment,  whose  products  the 
mark  is  intended  to  distinguish,  has  passed  at  the  same  time  to 
the  same  person. 

(2)  The  proof  of  what  precedes  shall  be  made  by  the  de- 
posit in  the  Auxiliary  Bureau  of  Industrial  Property  of  a  cer- 
tified extract  of  the  document  relative  thereto. 

(3)  The  assignment  shall  be  registered,  in  whatever  con- 
cerns marks  registered  in  accordance  with  Art.  5,  on  the  written 
application  of  the  parties,  or  also  on  the  application  of  the  pur- 
chaser alone,  if  the  assignment  of  the  mark  appears  sufficiently 
from  the  extract  mentioned  in  the  preceding  paragraph ;  and,  in 
whatever  concerns  marks  registered  in  accordance  with  Art.  8, 
after  the  receipt  of  the  notice  from  the  Bureau  of  The  Hague 
relative  to  the  registration  that  has  been  there  affected,  it  shall 
be  endorsed  on  the  margin  of  the  registration. 

(4)  For  the  registration  of  the  assignment  of  a  mark  regis- 
tered in  conformity  with  Art.  5,  there  shall  be  due  a  fee  of  five 
florins,  payable  at  the  moment  on  which  this  registration  shall 
be  applied  for. 

ART.  21.  (1)  Notice  shall  be  immediately  given  to  the 
Bureau  of  The  Hague,  which  shall  communicate  the  matter  to 
the  International  Bureau  at  Berne,  of  the  forfeiture,  or  of  the 
application  for  the  registration  of  the  assignment  of  an  inter- 
nationally registered  mark  that  shall  have  been  deposited  in  the 
Bureau  of  Industrial  Property  in  conformity  with  Art.  7. 

(2)  The  assignment  of  a  like  mark  shall  not  be  registered 
if  the  assignment  is  effected  in  favor  of  a  person  not  of  Dutch 
nationality,  not  being  domiciled  in  one  of  the  States  adherent 
to  the  above  mentioned  Arrangement  of  Madrid,  and  not  pos- 
sessing in  the  territory  of  one  of  these  States  a  serious  indus- 
trial or  commercial  establishment  serving  effectively  in  the 
carrying  on  of  industry  or  commerce. 

ART.  22.  (1)  The  marks  that,  on  the  entry  into  force  of 
the  present  ordinance,  shall  already  be  registered  by  virtue  of 
the  provisions  antedating  this  entry  into  force,  shall  enjoy  the 
same  protection  as  if  they  had  been  registered  in  accordance 
with  the  present  ordinance.  The  twenty  years  mentioned  in 
Art.  18,  Sec.  3,  shall  commence  to  run,  for  these  marks  by  count- 
ing from  the  day  on  which  the  registration  took  place  in  virtue 
of  the  prior  provisions. 

(2)  For  the  application  of  Art.  7  of  the  present  ordinance 


220  CURACAO 

these  marks  shall  be  considered  as  having  been  deposited  in 
accordance  with  Art.  4. 

ART.  23.  (1)  He  that  knowingly  imports  into  the  colony 
goods  that  falsely  bear  upon  themselves  or  upon  their  containers 
a  name  (firm)  or  a  mark  belonging  to  a  third  party,  or  a  mark 
corresponding  in  its  essential  details  to  that  of  a  third  party, 
or  that  bear  as  indications  of  origin  the  name  of  a  determined 
locality,  with  the  addition  of  a  fictitious  name  or  of  an  imagin- 
ary firm,  even  slightly  modified,  of  a  third  party,  without  these 
goods  being  clearly  intended  to  be  re-exported,  and  whoever 
sells  them,  off ers  them  for  sale,  consigns  them,  distributes  them, 
or  holds  them  in  store  to  be  sold  or  distributed,  is  liable,  in  the 
Dutch  Indies,  according  to  the  nationality  of  the  delinquent,  to 
imprisonment  at  hard  labor,  but  without  irons,  and  in  Surinam 
and  in  Curasao  to  imprisonment  for  from  eight  days  to  three 
months,  with  or  without  a  fine  of  from  25  to  600  florins. 

(2)  If,  at  the  time  that  the  crime  is  committed,  there  have 
not  yet  expired  five  years  since  a  prior  conviction,  pronounced 
against  the  same  criminal  for  a  like  crime,  has  become  final,  the 
maximum  of  the  penalties  provided  for  hereinbefore  shall  be 
doubled. 

ART.  24.  The  present  ordinance  shall  not  be  applicable  to 
marks  established  by  public  authority. 

ART.  25.  On  the  entry  into  force  of  the  present  ordinance 
there  shall  cease  to  be  of  effect  the  Royal  ordinances  of  Nov.  9, 
1893,  Nos.  24,  25  and  26  (Nederlandsch  StaatsUad,  Nos.  159,  160 
and  161;  Indisch  StaatsUad,  No.  305;  Gouvernementsblad  van 
Suriname,  No.  31  and  PuUicatieUad  van  Curasao,  No.  20) ;  inso- 
far as  they  have  been  modified  in  the  last  place  by  the  ordinances 
of  March  2, 1908,  No.  64;  (Nederlandsch  StaatsUad,  No.  79;  In- 
disch StaatsUad,  No.  365)  and  Aug.  18,  1910,  Nos.  31  and  32; 
(Nederlandsch  StaatsUad,  Nos.  258  and  259;  Gouvernements- 
Uad  van  Suriname,  No.  74  and  PuUicatieUad  van  Curagao,  No. 
52)  the  same  as  Arts.  10,  kept  in  force,  of  the  Royal  ordinances 
of  April  6,  1885,  No.  13  (Indisch  StaatsUad,  No.  109),  Feb.  3, 
1890,  No.  26  (Gouvernementsblad  van  Suriname,  No.  7)  and 
Feb.  3, 1890,  No.  27  (PuUicatieUad  van  Curagao,  No.  2). 

ART.  26.  The  present  ordinance  may  be  cited  under  the 
title  of  "Regulation  for  Industrial  Property  in  the  Colonies, 
1912." 

ART.  27.  The  present  ordinance  shall  become  effective  on 
the  date  that  shall  be  fixed,  in  the  Dutch  Indies,  by  the  Governor 
General,  and  in  Surinam  and  in  Curaqao  by  the  Governor. 

Our  Ministers  of  the  Colonies,  of  Agriculture,  Industry  and 


CUEACAO  221 

Commerce,  are  charged,  each  for  whatever  concerns  him,  with 
the  execution  of  the  present  ordinance,  which  shall  be  published 
in  the  Staatsblad,  whereof  a  copy  shall  be  sent  to  the  Council 
of  State. 

Given  at  Loo,  August  29,  1912. 


CYPRUS 

LAW  NO.  VIII,  JULY  11,  1910 

Short  Title 

1.  This  Law  may  be  cited  as  the  Trade  Marks  Registration 
Law,  1910. 

PART  I 

DEFINITIONS 

2.  In  and  for  the  purposes  of  this  Law  (unless  the  context 
otherwise  requires) : — 

A  "mark"  shall  include  a  device,  brand,  heading,  label, 
ticket,  name,  signature,  word,  letter,  numeral,  or  any  combina- 
tion thereof : 

A  "trade  mark"  shall  mean  a  mark  used  or  proposed  to  be 
used  upon  or  in  connection  with  goods  for  the  purpose  of  indi- 
cating that  they  are  the  goods  of  the  proprietor  of  such  trade 
mark  by  virtue  of  manufacture,  selection,  certification,  dealing 
with,  or  offering  for  sale : 

A  * ' registrable  trade  mark"  shall  mean  a  trade  mark  which 
is  capable  of  registration  under  the  provisions  of  this  Law : 

"The  register"  shall  mean  the  register  of  trade  marks  kept 
under  the  provisions  of  this  Law: 

A  "registered  trade  mark"  shall  mean  a  trade  mark  which 
is  actually  upon  the  register : 

"Prescribed"  shall  mean,  in  relation  to  proceedings  before 
the  Court,  prescribed  by  Rules  of  Court,  and  in  other  cases,  pre- 
scribed by  this  Law  or  the  Rules  thereunder: 

"The  Court"  shall  mean  the  Supreme  Court  of  Cyprus. 
Register  of  Trade  Marks 

3.  There  shall  be  kept  for  the  purposes  of  this  Law  at  the 
Office  of  the  Chief  Collector  of  Customs  at  Nicosia,  or  by  such 
other  officer  or  at  such  other  place  as  the  High  Commissioner 
may  at  any  time  direct,  a  book  called  the  Register  of  Trade 
Marks,  wherein  shall  be  entered  all  registered  trade  marks  with 
the  names  and  addresses  of  their  proprietors,  notifications  of 
assignments  and  transmissions,  disclaimers,  conditions,  limita- 
tions, and  such  other  matters  relating  to  such  trade  marks  as 
may  from  time  to  time  be  prescribed.    The  register  shall  be  kept 
under  the  control  and  management  of  the  Chief  Collector  of 
Customs,  or  of  such  other  officer  appointed  as  hereinbefore  men- 
tioned, who  is  in  this  Law  referred  to  as  the  Registrar. 


CYPEUS  223 

Trust  Not  to  be  Entered  on  Register 

4.  There  shall  not  be  entered  in  the  register  any  notice  of 
any  trust  expressed,  implied  or  constructive,  nor  shall  any  such 
notice  be  receivable  by  the  Registrar. 

Inspection  of  and  Extract  from  Register 

5.  The  register  kept  under  this  Law  shall  at  all  convenient 
times  be  open  to  the  inspection  of  the  public,  subject  to  such 
regulations  as  may  be  prescribed;  and  certified  copies,  sealed 
with  the  seal  of  the  Registrar  of  any  entry  in  any  such  register 
shall  be  given  to  any  person  requiring  the  same  on  payment  of 
the  prescribed  fee. 

REGISTRABLE  TRADE  MARKS 
Trade  Mark  Must  be  for  Particular  Goods 

6.  A  trade  mark  must  be  registered  in  respect  of  particular 
goods  or  classes  of  goods. 

Registrable  Trade  Marks 

7.  A  registrable  trade  mark  must  contain  or  consist  of 
at  least  one  of  the  following  essential  particulars : — 

(1)  The  name  of  a  company,  individual,  or  firm  represented 
in  a  special  or  particular  manner ; 

(2)  The  signature  of  the  applicant  for  registration  or  some 
predecessor  in  his  business ; 

(3)  An  invented  word  or  invented  words; 

(4)  A  word  or  words  having  no  direct  reference  to  the 
character  or  quality  of  the  goods,  and  not  being  according  to 
its  ordinary  signification  a  geographical  name  or  a  surname; 

(5)  Any  other  distinctive  mark,  but  a  name,  signature,  or 
word  or  words,  other  than  such  as  fall  within  the  descriptions 
in  the  above  paragraphs  (1),  (2),  (3)  and  (4),  shall  not,  except 
by  order  of  the  Court,  be  deemed  a  distinctive  mark ; 

Provided  always  that  any  special  or  distinctive  word  or 
words,  letter,  numeral,  or  combination  of  letters  or  numerals 
used  in  Cyprus  as  a  trade  mark  by  the  applicant  or  his  prede- 
cessors in  business  before  the  first  day  of  January  one  thousand 
eight  hundred  and  ninety-eight,  which  has  continued  to  be  used 
(either  in  its  original  form  or  with  additions  or  alterations  not 
substantially  affecting  the  identity  of  the  same)  down  to  the 
date  of  the  application  for  registration  shall  be  registrable  as 
a  trade  mark  under  this  Law. 

For  the  purposes  of  this  section  "distinctive"  shall  mean 
adapted  to  distinguish  the  goods  of  the  proprietor  of  the  trade 
mark  from  those  of  other  persons. 

In  determining  whether  a  trade  mark  is  so  adapted,  the 
Court  or  the  Registrar,  as  the  case  may  be,  may,  in  the  case  of 


224  CYPRUS 

a  trade  mark  in  actual  use,  take  into  consideration  the  extent 
to  which  such  user  has  rendered  such  trade  mark  in  fact  dis- 
tinctive for  the  goods  with  respect  to  which  it  is  registered  or 
proposed  to  be  registered. 

Coloured  Trade  Marks 

8.  A  trade  mark  may  be  limited  in  whole  or  in  part  to  one 
or  more  specified  colours,  and  in  such  case  the  fact  that  it  is  so 
limited  shall  be  taken  into  consideration  by  the  Court  or  the 
Registrar,  as  the  case  may  be,  having  to  decide  on  the  distinc- 
tive character  of  such  trade  mark.    If  and  so  far  as  a  trade  mark 
is  registered  without  limitation  of  colour  it  shall  be  deemed  to 
be  registered  for  all  colours. 

Restriction  on  Registration 

9.  It  shall  not  be  lawful  to  register  as  a  trade  mark  or 
part  of  a  trade  mark  any  matter,  the  use  of  which  would  be 
reason  of  its  being  calculated  to  deceive  or  otherwise  be  dis- 
entitled to  protection  in  a  Court  of  Justice,  or  would  be  con- 
trary to  law  or  morality,  or  any  scandalous  design. 

REGISTRATION  OF  TRADE  MARKS 
Application  for  Registration 

10.  (1)  Any  person  claiming  to  be  proprietor  of  a  trade 
mark  who  is  desirous  of  registering  the  same  must  apply  in 
writing  to  the  Registrar  in  the  prescribed  manner. 

(2)  Subject  to  the  provisions  of  this  Law  the  Register  may 
refuse  such  application,  or  may  accept  it  absolutely  or  subject 
to  conditions,  amendments,  or  modifications. 

(3)  In  case  of  any  such  refusal  or  conditional  acceptance 
the  Registrar  shall,  if  required  by  the  applicant,  state  in  writing 
the  grounds  of  his  decision  and  the  materials  used  by  him  in 
arriving  at  the  same,  and  such  decision  shall  be  subject  to 
appeal  to  the  Court. 

(4)  An  appeal  under  this  section  shall  be  made  in  the  pre- 
scribed manner,  and  on  such  appeal  the  Court  shall,  if  required, 
hear  the  applicant  and  the  Registrar,  and  shall  make  an  order 
determining  whether,  and  subject  to  what  conditions,  amend- 
ments, or  modifications,  if  any,  the  application  is  to  be  accepted. 

(5)  Appeals   under   this   section   shall   be   heard   on   the 
materials  so  stated  by  the  Registrar  to  have  been  used  by  him 
in  arriving  at  the  decision,  and  no  further  grounds  of  objection 
to  the  acceptance  of  the  application  shall  be  allowed  to  be  taken 
by  the  Registrar,  other  than  those  stated  by  him,  except  by 
leave  of  the  Court  hearing  the  appeal.     Where  any  further 
grounds  of  objection  are  taken  the  applicant  shall  be  entitled 
to  withdraw  his  application  without  payment  of  costs  on  giving 


CYPEUS  225 

notice  as  prescribed. 

(6)  The  Registrar  or  the  Court,  as  the  case  may  be,  may 
at  any  time,  whether  before  or  after  acceptance,  correct  any 
error  in  or  in  connection  with  the  application,  or  may  permit  the 
applicant  to  amend  his  application  upon  such  terms  as  they  may 
think  fit. 

Advertisement  of  Application 

11.  When  an  application  for  registration  of  a  trade  mark 
has  been  accepted,  whether  absolutely  or  subject  to  conditions, 
the  Registrar  shall,  as  soon  as  may  be  after  such  acceptance, 
cause  the  application  as  accepted  to  be  advertised  in  the  pre- 
scribed manner.    Such  advertisement  shall  set  forth  all  condi- 
tions subject  to  which  the  application  has  been  accepted. 

Opposition  to  Registration 

12.  (1)  Any  person  may,  within  the  prescribed  time  from 
the  date  of  the  advertisement  of  an  application  for  the  regis- 
tration of  a  trade  mark,  give  notice  to  the  Registrar  of  opposi- 
tion to  such  registration. 

(2)  Such  notice  shall  be  given  in  writing  in  the  prescribed 
manner,  and  shall  include  a  statement  of  the  grounds  of  oppo- 
sition. 

(3)  The  Registrar  shall  send  a  copy  of  such  notice  to  the 
applicant,  and  within  the  prescribed  time  after  the  receipt  of 
such  notice,  the  applicant  shall  send  to  the  Registrar,  in  the 
prescribed  manner,  a  counter-statement  of  the  grounds  on  which 
he  relies  for  his  application,  and,  if  he  does  not  do  so,  he  shall 
be  deemed  to  have  abandoned  his  application. 

(4)  If  the  applicant  sends  such  counter-statement,  the  Reg- 
istrar shall  furnish  a  copy  thereof  to  the  persons  giving  notice 
of  opposition,  and  shall,  after  hearing  the  parties,  if  so  required, 
and  considering  the  evidence,  decide  whether,  and  subject  to 
what  conditions,  registration  is  to  be  permitted. 

(5)  The  decision  of  the  Registrar  shall  be  subject  to  appeal 
to  the  Court. 

(6)  An  appeal  under  this  section  shall  be  made  in  the  pre- 
scribed manner,  and  on  such  appeal  the  Court  shall,  if  required, 
hear  the  parties  and  the  Registrar,  and  shall  make  an  order 
determining  whether,  and  subject  to  what  conditions,  if  any, 
registration  is  to  be  permitted. 

(7)  On  the  hearing  of  any  such  appeal  any  party  may  either 
in  the  manner  prescribed  or  by  special  leave  of  the  Court  bring 
forward  further  material  for  the  consideration  of  the  Court. 

(8)  In  proceedings  under  this  section  no  further  grounds 
of  objection  to  the  registration  of  a  trade  mark  shall  be  allowed 
to  be  taken  by  the  opponent  or  the  Registrar  other  than  those 


226  CYPRUS 

stated  by  the  opponent  as  herein-above  provided  except  by  leave 
of  the  Court  hearing  the  appeal.  Where  any  further  grounds 
of  objection  are  taken  the  applicant  shall  be  entitled  to  withdraw 
his  application  without  payment  of  the  costs  of  the  opponent 
on  giving  notice  as  prescribed. 

(9)  In  any  appeal  under  this  section,  the  Court  may,  after 
hearing  the  Registrar,  permit  the  trade  mark  proposed  to  be 
registered  to  be  modified  in  any  manner  not  substantially  affect- 
ing the  identity  of  such  trade  mark,  but  in  such  case  the  trade 
mark  as  so  modified  shall  be  advertised  in  the  prescribed  man- 
ner before  being  registered. 

(10)  The  Registrar  shall  have  power  in  proceedings  under 
this  section  to  award  to  any  party  such  costs  as  he  may  consider 
reasonable,  and  to  direct  how  and  by  what  parties  they  are  to 
be  paid. 

(11)  If  a  party  giving  notice  of  opposition  or  of  appeal 
neither  resides  nor  carries  on  business  in  Cyprus  the  Registrar 
or  the  Court,  as  the  case  may  be,  may  require  such  party  to  give 
security  for  costs  of  the  proceedings  before  him  qr  if  relative  to 
such  opposition  or  appeal  and  in  default  of  such  security  being 
duly  given  may  treat  the  opposition  or  appeal  as  abandoned. 

Disclaimers 

13.  If  a  trade  mark  contains  parts  not  separately  regis- 
tered by  the  proprietor  as  trade  marks,  or  if  it  contains  matter 
common  to  the  trade  or  otherwise  of  a  non-distinctive  character, 
the  Registrar  or  the  Court,  in  deciding  whether  such  trade  mark 
shall  be  entered  or  shall  remain  upon  the  register,  may  require 
as  a  condition  of  its  being  upon  the  register,  that  the  proprietor 
shall  disclaim  any  right  to  the  exclusive  use  of  any  part  or  parts 
of  such  trade  mark,  or  of  all  or  any  portion  of  such  matter,  to 
the  exclusive  use  of  which  they  hold  him  not  to  be  entitled,  or 
that  he  shall  make  such  other  disclaimer  as  they  may  consider 
needful  for  the  purpose  of  defining  his  rights  under  such  regis- 
tration: Provided  always  that  no  disclaimer  upon  the  register 
shall  affect  any  rights  of  the  proprietor  of  a  trade  mark  except 
such  as  arise  out  of  the  registration  of  the  trade  mark  in  respect 
of  which  the  disclaimer  is  made. 

Date  of  Registration 

14.  When  an  application  for  registration  of  a  trade  mark 
has  been  accepted  and  has  not  been  opposed,  and  the  time  for 
notice  of  opposition  has  expired,  or  having  been  opposed  the 
opposition  has  been  decided  in  favour  of  the  applicant,  the  Reg- 
istrar shall,  unless  the  Court  otherwise  direct,  register  the  said 
trade  mark,  and  the  trade  mark,  when  registered,  shall  be  regis- 
tered as  of  the  date  of  the  application  for  registration,  and  such 


CYPRUS  227 

date  shall  be  deemed  for  the  purposes  of  this  Law  to  be  the  date 
of  registration. 

Certificate  of  Registration 

15.  On  the  registration  of  a  trade  mark  the  Registrar  shall 
under  his  hand  and  seal  issue  to  the  applicant  a  certificate  in  the 
prescribed  form  of  the  registration  of  such  trade  mark. 

Non-completion  of  Registration 

16.  Where  registration  of  a  trade  mark  is  not  completed 
within  twelve  months  from  the  date  of  the  application  by  reason 
of  default  on  the  part  of  the  applicant,  the  Registrar  may,  after 
giving  notice  of  the  non-completion  to  the  applicant  in  writing 
in  the  prescribed  manner,  treat  the  application  as  abandoned 
unless  it  is  completed  within  the  time  specified  in  that  behalf 
in  such  notice. 

IDENTICAL  TRADE  MARKS 

17.  Except  by  order  of  the  Court  or  in  the  case  of  trade 
marks  in  use  in  Cyprus  before  the  first  day  of  January  one  thou- 
sand eight  hundred  and  ninety-eight  no  trade  mark  shall  be 
registered  in  respect  of  any  goods  or  description  of  goods 
which  is  identical  with  one  belonging  to  a  different  proprie- 
tor which  is  already  on  the  register  with  respect  to  such  goods 
or  description  of  goods,  or  so  nearly  resembling  such  a  trade 
mark  as  to  be  calculated  to  deceive. 

Rival  Claims  to  Identical  Maries 

18.  Where  each  of  several  persons  claims  to  be  proprietor 
of  the  same  trade  mark,  or  of  nearly  identical  trade  marks  in 
respect  of  the  same  goods  or  description  of  goods,  and  to  be 
registered  as  such  proprietor,  the  Registrar  may  refuse  to  reg- 
ister any  of  them  until  their  rights  have  been  determined  by  the 
Court,  or  have  been  settled  by  agreement  in  a  manner  approved 
by  him  or  (on  appeal)  by  the  Court. 

Concurrent  User 

19.  In  a  case  of  honest  concurrent  user  or  of  other  special 
circumstances  which,  in  the  opinion  of  the  Court,  make  it  proper 
so  to  do,  the  Court  may  permit  the  registration  of  the  same 
trade  mark,  or  of  nearly  identical  trade  marks,  for  the  same 
goods  or  description  of  goods  by  more  than  one  proprietor  sub- 
ject to  such  conditions  and  limitations,  if  any,  as  to  mode  or 
place  of  user  or  otherwise,  as  it  may  think  it  right  to  impose. 

ASSIGNMENT 
Assignment  and  Transmission  of  Trade  Marks 

20.  A  trade  mark  when  registered  shall  be  assigned  and 
transmitted  only  in  connection  with  the  goodwill  of  the  business 
concerned  in  the  goods  for  which  it  has  been  registered  and  shall 


228  CYPRUS 

be  determinable  with  that  goodwill.  But  nothing  in  this  section 
contained  shall  be  deemed  to  affect  the  right  of  the  proprietor 
of  a  registered  trade  mark  to  assign  the  right  to  use  the  same 
in  any  British  possession  or  protectorate  or  foreign  country  in 
connection  with  any  goods  for  which  it  is  registered  together 
with  the  goodwill  of  the  business  therein  in  such  goods. 

Apportionment  of  Marks  on  Dissolution  of  Partnership 

21.  In  any  case  where  from  any  cause,  whether  by  reason 
of  dissolution  of  partnership  or  otherwise,  a  person  ceases  to 
carry  on  business,  and  the  goodwill  of  such  person  does  not  pass 
to  one  successor  but  is  divided,  the  Registrar  may  (subject  to 
the  provisions  of  this  Law  as  to  associated  trade  marks),  on 
the  application  of  the  parties  interested,  permit  an  apportion- 
ment of  the  registered  trade  marks  of  the  person  among  the 
persons  in  fact  continuing  the  business,  subject  to  such  condi- 
tions and  modifications,  if  any,  as  he  may  think  necessary  in  the 
public  interest.   Any  decision  of  the  Registrar  under  this  section 
shall  be  subject  to  appeal  to  the  Court. 

Associated  Trade  Marks 

22.  If  application  be  made  for  the  registration  of  a  trade 
mark  so  closely  resembling  a  trade  mark  of  the  applicant 
already  on  the  register  for  the  same  goods  or  description  of 
goods  as  to  be  calculated  to  deceive  or  cause  confusion  if  used 
by  a  person  other  than  the  applicant,  the  Court  or  the  Registrar, 
as  the  case  may  be,  hearing  the  application  may  require  as  a 
condition  of  registration  that  such  trade  marks  shall  be  entered 
on  the  register  as  associated  trade  marks. 

Combined  Trade  Marks 

23.  If  the  proprietor  of  a  trade  mark  claims  to  be  entitled 
to  the  exclusive  use  of  any  portion  of  such  trade  mark  sepa- 
rately he  may  apply  to  register  the  same  as  separate  trade 
marks.    Each  such  separate  trade  mark  must  satisfy  all  the 
conditions  and  shall  have  all  the  incidents  of  an  independent 
trade  mark,  except  that  when  registered  it  and  the  trade  mark 
of  which  it  forms  a  part  shall  be  deemed  to  be  associated  trade 
marks  and  shall  be  entered  on  the  register  as  such,  but  the  user 
of  the  whole  trade  mark  shall  for  the  purposes  of  this  Law  be 
deemed  to  be  also  a  user  of  such  registered  trade  marks  belong- 
ing to  the  same  proprietor  as  it  contains. 

Series  of  Trade  Marks 

24.  When  a  person  claiming  to  be  the  proprietor  of  several 
trade  marks  for  the  same  description  of  goods  which,  while 
resembling  each  other  in  the  material  particulars  thereof,  yet 
differ  in  respect  of — 


CYPRUS  229 

(a)  Statements  of  the  goods  for  which  they  are  respec 
tively  used  or  proposed  to  be  used;  or 

(b)  Statements  of  number,  price,  quality,  or  names  of 
places;  or 

(c)  Other  matter  of  a  non-distinctive  character  which  does 
not  substantially  affect  the  identity  of  the  trade  mark ;  or 

(d)  Colour; 

seeks  to  register  such  trade  marks,  they  may  be  registered  as  a 
series  in  one  registration.  All  the  trade  marks  in  a  series  of 
trade  marks  so  registered  shall  be  deemed  to  be,  and  shall  be 
registered  as,  associated  trade  marks. 

Assignment  and  User  of  Associated  Trade  Marks 

25.  Associated  trade  marks  shall  be  assignable  or  trans- 
missible only  as  a  whole  and  not  separately,  but  they  shall  for 
all  other  purposes  be  deemed  to  have  been  registered  as  sepa- 
rate trade  marks.    Provided  that  where  under  the  provisions 
of  this  Law  user  of  a  registered  trade  mark  is  required  to  be 
proved  for  any  purpose,  the  Court  or  the  Registrar,  as  the  case 
may  be,  may  if  and  so  far  as  it  or  he  shall  think  right  accept 
user  of  an  associated  registered  trade  mark,  or  of  the  trade 
mark  with  additions  or  alterations  not  substantially  affecting 
its  identity,  as  an  equivalent  for  such  user. 

RENEWAL  OF  REGISTRATION 
Duration  of  Registration 

26.  The  registration  of  a  trade  mark  shall  be  for  a  period 
of  fourteen  years,  but  may  be  renewed  from  time  to  time  in 
accordance  with  the  provisions  of  this  Law. 

Renewal  of  Registration 

27.  The  Registrar  shall,  on  application  made  by  the  regis- 
tered proprietor  of  a  trade  mark  in  the  prescribed  manner  and 
within  the  prescribed  period,  renew  the  registration  of  such 
trade  mark  for  a  period  of  fourteen  years  from  the  expiration 
of  the  original  registration  or  of  the  last  renewal  of  registra- 
tion, as  the  case  may  be,  which  date  is  herein  termed  '  *  the  expi- 
ration of  the  last  registration." 

Procedure  on  Expiry  of  Period  of  Registration 

28.  At  the  prescribed  time  before  the  expiration  of  the  last 
registration  of  a  trade  mark,  the  Registrar  shall  send  notice  in 
the  prescribed  manner  to  the  registered  proprietor  at  his  regis- 
tered address  of  the  date  at  which  the  existing  registration  will 
expire  and  the  conditions  as  to  payment  of  fees  and  otherwise 
upon  which  a  renewal  of  such  registration  may  be  obtained,  and 
if  at  the  expiration  of  the  time  prescribed  in  that  behalf  such 
conditions  have  not  been  duly  complied  with,  the  Registrar  may 


230  CYPRUS 

remove  such  trade  mark  from  the  register,  subject  to  such  con- 
ditions, if  any,  as  to  its  restoration  to  the  register  as  may  be 
prescribed. 

Status  of  Unrenewed  Trade  Mark 

29.  Where  a  trade  mark  has  been  removed  from  the  reg- 
ister for  non-payment  of  the  fee  for  renewal,  such  trade  mark 
shall,  nevertheless,  for  the  purpose  of  any  application  for  reg- 
istration during  one  year  next  after  the  date  of  such  removal, 
be  deemed  to  be  a  trade  mark  which  is  already  registered,  unless 
it  is  shown  to  the  satisfaction  of  the  Registrar  that  there  had 
been  no  bona  fide  trade  user  of  such  trade  mark  during  the  two 
years  immediately  preceding  such  removal. 

CORRECTION  AND  RECTIFICATION  OF  THE  REGISTER 
Correction  of  Register 

30.  The  Registrar  may,  on  request  made  in  the  prescribed 
manner  by  the  registered  proprietor  or  by  some  person  entitled 
by  Law  to  act  in  his  name : 

(1)  Correct  any  error  in  the  name  or  address  of  the  regis- 
tered proprietor  of  a  trade  mark;  or 

(2)  Enter  any  change  in  the  name  or  address  of  the  person 
who  is  registered  as  proprietor  of  a  trade  mark ;  or 

(3)  Cancel  the  entry  of  a  trade  mark  on  the  register;  or 

(4)  Strike  out  any  goods  or  classes  of  goods  from  those  for 
which  a  trade  mark  is  registered;  or 

(5)  Enter  a  disclaimer  or  memorandum  relating  to  a  trade 
mark  which  does  not  in  any  way  extend  the  rights  given  by  the 
existing  registration  of  such  trade  mark. 

Any  decision  of  the  Registrar  under  this  section  shall  be 
subject  to  appeal  to  the  Court. 

Registration  of  Assignments,  etc. 

31.  Subject  to  the  provisions  of  this  Law  where  a  person 
becomes  entitled  to  a  registered  trade  mark  by  assignment, 
transmission,  or  other  operation  of  Law,  the  Registrar  shall, 
on  request  made  in  the  prescribed  manner,  and  on  proof  of  title 
to  his  satisfaction,  cause  the  name  and  address  of  such  person 
to  be  entered  on  the  register  as  proprietor  of  the  trade  mark. 
Any  decision  of  the  Registrar  under  this  section  shall  be  subject 
to  appeal  to  the  Court. 

Alteration  of  Registered  Trade  Mark 

32.  The  registered  proprietor  of  any  trade  mark  may  ap- 
ply in  the  prescribed  manner  to  the  Registrar  for  leave  to  add 
to  or  alter  such  trade  mark  in  any  manner  not  substantially 
affecting  the  identity  of  the  same,  and  the  Registrar  may  refuse 
such  leave  or  may  grant  the  same  on  such  terms  as  he  may 


CYPRUS  231 

think  fit,  but  any  such  refusal  or  conditional  permission  shall 
be  subject  to  appeal  to  the  Court.  If  leave  be  granted,  the 
trade  mark  as  altered  shall  be  advertised  in  the  prescribed 
manner. 

Rectification  of  Register 

33.  Subject  to  the  provisions  of  this  Law — 

(1)  The  Court  may  on  the  application  in  the  prescribed 
manner  of  any  person  aggrieved  by  the  non-insertion  in  or  omis- 
sion from  the  register  of  any  entry,  or,  by  any  entry  made  in 
the  register  without  sufficient  cause,  or  by  any  entry  wrongly 
remaining  on  the  register,  or  by  any  error  or  defect  in  an  entry 
in  the  register,  make  such  order  for  making,  expunging,  or 
varying  such  entry,  as  it  may  think  fit : 

(2)  The  Court  may  in  any  proceeding  under  this  section 
decide  any  question  that  it  may  be  necessary  or  expedient  to 
decide  in  connection  with  the  rectification  of  the  register: 

(3)  In  case  of  fraud  in  the  registration  or  transmission  of 
a  registered  trade  mark,  the  Registrar  may  himself  apply  to  the 
Court  under  the  provisions  of  this  section : 

(4)  Any  order  of  the  Court  rectifying  the  register  shall 
direct  that  notice  of  the  rectification  shall  be  served  upon  the 
Registrar  in  the  prescribed  manner,  who  shall  upon  receipt  of 
such  notice  rectify  the  register  accordingly. 

Non-user  of  Trade  Mark 

34.  A  registered  trade  mark  may,  on  the  application  to 
the  Court  of  any  person  aggrieved,  be  taken  off  the  register  in 
respect  of  any  of  the  goods  for  which  it  is  registered,  on  the 
ground  that  it  was  registered  by  the  proprietor  or  a  predecessor 
in  title  without  any  bona  fide  intention  to  use  the  same  in  con- 
nection with  such  goods,  and  there  has  in  fact  been  no  bona  fide 
user  of  the  same  in  connection  therewith,  or  on  the  ground  that 
there  has  been  no  bona  fide  user  of  such  trade  mark  in  connec- 
tion with  such  goods  during  the  five  years  immediately  preced- 
ing the  application,  unless  in  either  case  such  non-user  is  shown 
to  be  due  to  special  circumstances  in  the  trade,  and  not  to  any 
intention  not  to  use  or  to  abandon  such  trade  mark  in  respect 
of  such  goods. 

EFFECT  OF  REGISTRATION 
Powers  of  Registered  Proprietor 

35.  Subject  to  the  provisions  of  this  Law — 

(1)  The  person  for  the  time  being  entered  in  the  register 
as  proprietor  of  a  trade  mark  shall,  subject  to  any  rights  ap- 
pearing from  such  register  to  be  vested  in  any  other  person, 
have  power  to  assign  the  same,  and  to  give  effectual  receipts 
for  any  consideration  for  such  assignment : 


232  CYPRUS 

(2)  Any  equities  in  respect  of  a  trade  mark  may  be  en- 
forced in  like  manner  as  in  respect  of  any  other  personal 
property. 

Rights  of  Proprietor  of  Trade  Mark 

36.  Subject  to  the  provisions  of  section  38  of  this  Law  and 
to  any  limitations  and  conditions  entered  upon  the  register,  the 
registration  of  a  person  as  proprietor  of  a  trade  mark  shall,  if 
valid,  give  to  such  person  the  exclusive  right  to  the  use  of  such 
trade  mark  upon  or  in  connection  with  the  goods  in  respect  of 
which  it  is  registered  and  shall  give  to  such  person  the  right  to 
bring  an  action  against  any  infringer  thereof  for  an  injunction 
to  restrain  such  infringement  and  to  recover  from  such  infringer 
such  damages  as  such  person  so  bringing  such  action  can  prove 
to  have  been  occasioned  to  him  by  reason  of  such  infringement 
and  for  the  destruction  of  all  such  infringing  trade  marks :  Pro- 
vided always  that  where  two  or  more  persons  are  registered 
proprietors  of  the  same  (or  substantially  the  same)  trade  mark 
in  respect  of  the  same  goods  no  rights  of  exclusive  user  of  such 
trade  mark  shall  (except  so  far  as  their  respective  rights  shall 
have  been  denned  by  the  Court)  be  acquired  by  any  one  of  such 
persons  as  against  any  other  by  the  registration  thereof,  but 
each  of  such  persons  shall  otherwise  have  the  same  rights  as  if 
he  were  the  sole  registered  proprietor  thereof. 

Registration  to  be  Prima  Facie  Evidence  of  Validity 

37.  In  all  legal  proceedings  relating  to  a  registered  trade 
mark  (including  applications  under  section  33  of  this  Law)  the 
fact  that  a  person  is  registered  as  proprietor  of  such  trade  mark 
shall  be  prima  facie  evidence  of  the  validity  of  the  original  regis- 
tration of  such  trade  mark  and  of  all  subsequent  assignments 
and  transmissions  of  the  same. 

Registration  to  be  Conclusive  After  Seven  Years 

38.  In  all  legal  proceedings  relating  to  a  registered  trade 
mark  (including  applications  under  section  33  of  this  Law)  the 
registration  of  such  trade  mark  shall  after  the  expiration  of 
seven  years  from  the  date  of  such  registration  be  taken  to  be 
valid  in  all  respects  unless  such  registration  was  obtained  by 
fraud,  or  unless  the  trade  mark  offends  against  the  provisions 
of  section  9  of  this  Law. 

Provided  that  nothing  in  this  Law  shall  entitle  the  pro- 
prietor of  a  registered  trade  mark  to  interfere  with  or  restrain 
the  user  by  any  person  of  a  similar  trade  mark  upon  or  in  con- 
nection with  goods  upon  or  in  connection  with  which  such  per- 
son has,  by  himself  or  his  predecessors  in  business,  continuously 
used  such  trade  mark  from  a  date  anterior  to  the  user  of  the 
first-mentioned  trade  mark  by  the  proprietor  thereof  or  his 


CYPEUS  233 

predecessors  in  business,  or  to  object  (on  such  user  being 
proved)  to  such  person  being  put  upon  the  register  for  such 
similar  trade  mark  in  respect  of  such  goods  under  the  pro- 
visions of  section  19  of  this  Law. 

Unregistered  Trade  Mark 

39.  Np  person  shall  be  entitled  to  institute  any  proceeding 
to  prevent  or  to  recover  damages  for  the  infringement  of  an 
unregistered  trade  mark  unless  such  trade  mark  was  in  use  in 
Cyprus  before  the  first  of  January  one  thousand  eight  hundred 
and  ninety-eight  and  has  been  refused  registration  under  this 
Law.    The  Registrar  may,  on  request,  grant  a  certificate  that 
such  registration  has  been  refused. 

Infringement 

40.  In  an  action  for  the  infringement  of  a  trade  mark  the 
Court  trying  the  question  of  infringement  shall  admit  evidence 
of  the  usages  of  the  trade  in  respect  to  the  get-up  of  the  goods 
for  which  the  trade  mark  is  registered,  and  of  any  trade  marks 
or  get-up  legitimately  used  in  connection  with  such  goods  by 
other  persons. 

User  of  Name,  Address,  or  Description  of  Goods 

41.  No  registration  under  this  Law  shall  interfere  with 
any  bona  fide  use  by  a  person  of  his  own  name  or  place  of  busi- 
ness or  that  of  any  of  his  predecessors  in  business,  or  the  use 
by  any  person  of  any  bona  fide  description  of  the  character  or 
quality  of  his  goods. 

"Passing-off"  Action 

42.  Nothing  in  this  Law  contained  shall  be  deemed  to  affect 
rights  of  action  against  any  person  for  passing-off  goods  as 
those  of  another  person  or  the  remedies  in  respect  thereof. 

LEGAL  PROCEEDINGS 
Certificate  of  Validity 

43.  In  any  legal  proceeding  in  which  the  validity  of  the 
registration  of  a  registered  trade  mark  comes  into  question  and 
is  decided  in  favour  of  the  proprietor  of  such  trade  mark,  the 
Court  may  certify  the  same,  and  if  it  so  certifies,  then  in  any 
subsequent  legal  proceeding  in  which  such  validity  comes  into 
question  the  proprietor  of  the  said  trade  mark  on  obtaining  a 
final  order  or  judgment  in  his  favour  shall  have  his  full  costs, 
charges,  and  expenses  as  between  advocate  and  client,  unless  in 
such  subsequent  proceeding  the  Court  certifies  that  he  ought  not 
to  have  the  same. 

Registrar  to  Have  Notice  of  Proceeding  for  Rectification 

44.  In  any  legal  proceeding  in  which  the  relief  sought  in- 


234  CYPEUS 

eludes  alteration  or  rectification  of  the  register,  the  Registrar 
shall  have  the  right  to  appear  and  be  heard,  and  shall  appear 
if  so  directed  by  the  Court.  Unless  otherwise  directed  by  the 
Court,  the  Registrar  in  lieu  of  appearing  and  being  heard  may 
submit  to  the  Court  a  statement  in  writing  signed  by  him,  giving 
particulars  of  the  proceedings  before  him  in  relation  to  the  mat- 
ter in  issue  or  of  the  grounds  of  any  decision  given  by  him  affect- 
ing the  same  or  of  the  practice  of  the  office  in  like  cases,  or  of 
such  other  matters  relevant  to  the  issues,  and  within  his  knowl- 
edge as  such  Registrar,  as  he  shall  think  fit,  and  such  statement 
shall  be  deemed  to  form  part  of  the  evidence  in  the  proceeding. 

COSTS 
Costs  of  Proceedings  Before  the  Court 

45.  In  all  proceedings  before  the  Court  under  this  Law 
the  costs  of  the  Registrar  shall  be  in  the  discretion  of  the  Court, 
but  the  Registrar  shall  not  be  ordered  to  pay  the  costs  of  any 
other  of  the  parties. 

EVIDENCE 
Mode  of  Giving  Evidence 

46.  In  any  proceedings  under  this  Law  before  the  Regis- 
trar the  evidence  shall  be  given  by  affidavit  in  the  absence  of 
directions  to  the  contrary,  but,  in  any  case  in  which  he  shall 
think  it  right  so  to  do,  the  Registrar  may  (with  the  consent  of 
the  parties)  take  evidence  viva  voce  in  lieu  of  or  in  addition  to 
evidence  by  affidavit.    Any  such  affidavit  may  in  the  case  of 
appeal  be  used  before  the  Court. 

In  case  any  part  of  the  evidence  is  taken  viva  voce  the  Reg- 
istrar shall,  in  respect  of  requiring  the  attendance  of  witnesses 
and  taking  evidence  on  oath,  have  the  same  powers  in  all  re- 
spects as  a  Court  of  Magisterial  Jurisdiction. 

Sealed  Copies  to  be  Evidence 

47.  Printed  or  written  copies  or  extracts  of  or  from  the 
register,  purporting  to  be  certified  by  and  under  the  hand  and 
seal  of  the  Registrar,  shall  be  admitted  in  evidence  in  all  Courts 
in  Cyprus  and  in  all  proceedings,  without  further  proof  or  pro- 
duction of  the  originals. 

Certificate  of  Registrar  to  be  Evidence 

48.  A  certificate  purporting  to  be  under  the  hand  of  the 
Registrar  as  to  any  entry,  matter,  or  thing  which  he  is  author- 
ized by  this  Law,  or  rules  made  thereunder,  to  make  or  do,  shall 
be  prima  facie  evidence  of  the  entry  having  been  made,  and  of 
the  contents  thereof,  and  of  the  matter  or  thing  having  been 
done  or  not  done. 


CYPRUS  235 

PART  II 

POWERS  AND  DUTIES  OF  REGISTRAR  OF  TRADE  MARKS 
Exercise  of  Discretionary  Power  by  Registrar 

49.  Where  any  discretionary  or  other  power  is  given  to 
the  Registrar  by  this  Law  or  rules  made  thereunder  he  shall 
not  exercise  that  power  adversely  to  the  applicant  for  registra- 
tion or  the  registered  proprietor  of  the  trade  mark  in  question 
without  (if  duly  required  so  to  do  within  the  prescribed  time) 
giving  such  applicant  or  registered  proprietor  an  opportunity 
of  being  heard. 

Appeal  from  Registrar 

50.  Except  where  expressly  given  by  the  provisions  of  this 
Law  or  rules  made  thereunder  there  shall  be  no  appeal  from  a 
decision  of  the  Registrar,  but  the  Court,  in  dealing  with  any 
question  of  the  rectification  of  the  register  (including  all  ap- 
plications under  the  provisions  of  section  33  of  this  Law),  shall 
have  power  to  review  any  decision  of  the  Registrar  relating  to 
the  entry  in  question  or  the  correction  sought  to  be  made. 

Recognition  of  Agents 

51.  Where  by  this  Law  any  act  has  to  be  done  by  or  to  any 
person  in  connection  with  a  trade  mark  or  proposed  trade  mark 
or  any  procedure  relating  thereto,  such  act  may  under  and  in 
accordance  with  rules  made  under  this  Law  or  in  particular 
cases  by  special  leave  of  the  Court  be  done  by  or  to  an  agent  of 
such  party  duly  authorized  in  the  prescribed  manner. 

Registrar  May  Take  Directions  of  King's  Advocate 

52.  The  Registrar  may,  in  any  case  of  doubt  or  difficulty 
arising  in  the  administration  of  any  of  the  provisions  of  this 
Law  apply  to  the  King's  Advocate  for  directions  in  the  matter. 

Annual  Report  of  Registrar 

53.  The  Registrar  shall  on  the  first  day  of  April  in  every 
year  issue  a  report  respecting  the  execution  by  him  of  this  Law. 
Power  of  Registrar  with  Approval  of  High  Commissioner  in 

Council  to  Make  Rules 

54.  (1)  Subject  to  the  provisions  of  this  Law  the  Regis- 
trar may  with  the  consent  and  approval  of  the  High  Commis- 
sioner in  Council  from  time  to  time  make  such  rules,  prescribe 
such  forms,  and  generally  do  such  things  as  he  thinks  expedient : 

(a)  For  regulating  the  practice  under  this  Law. 

(b)  For  classifying  goods  for  the  purposes  of  registration 
of  trade  marks. 

(c)  For  making  or  requiring  duplicates  of  trade  marks  and 
other  documents. 

(d)  For  securing  and  regulating  the  publishing  and  selling 


236  CYPRUS 

or  distributing  in  such  manner  as  the  Registrar  think  fit,  of 
copies  of  trade  marks  and  other  documents. 

(e)  Generally,  for  regulating  the  business  of  the  office  in 
relation  to  trade  marks  and  all  things  by  this  Law  placed  under 
the  direction  or  control  of  the  Registrar. 

(2)  Any  rules  made  in  pursuance  of  this  section  shall  be 
advertised  in  the  Cyprus  Gazette. 

(3)  Rules  made  under  this  section  shall,  whilst  in  force,  be 
of  the  same  effect  as  if  they  were  contained  in  this  Law. 

Fees 

55.  There  shall  be  paid  in  respect  of  applications  and  reg- 
istration and  other  matters  under  this  Law  such  fees  as  may 
be  prescribed  by  the  Registrar  with  the  consent  and  approval 
of  the  High  Commissioner  in  Council. 

SPECIAL,  TRADE  MABKS 
Standardization,  etc.,  Trade  Marks 

56.  Where  any  association  or  person  undertakes  the  exam- 
ination of  any  goods  in  respect  of  origin,  material,  mode  of 
manufacture,  quality,  accuracy,  or  other  characteristic,  and  cer- 
tifies the  result  of  such  examination  by  mark  used  upon  or  in 
connection  with  such  goods,  the  Registrar  may,  if  he  shall  judge 
it  to  be  to  the  public  advantage,  permit  such  association  or  per- 
son to  register  such  mark  as  a  trade  mark  in  respect  of  such 
goods,  whether  or  not  such  association  or  person  be  a  trading 
association  or  trader  or  possessed  of  a  goodwill  in  connection 
with  such  examination  and  certifying.    When  so  registered  such 
trade  mark  shall  be  deemed  in  all  respects  to  be  a  registered 
trade  mark  and  such  association  or  person  to  be  the  proprietor 
thereof,  save  that  such  trade  mark  shall  be  transmissible  or 
assignable  only  by  permission  of  the  Registrar. 

OFFENCES 
Falsification  of  Entries  in  Register 

57.  If  any  person  makes  or  causes  to  be  made  a  false  entry 
in  the  register  kept  under  this  Law  or  a  writing  falsely  pur- 
porting to  be  a  copy  of  an  entry  in  any  such  register,  or  pro- 
duces or  tenders  or  causes  to  be  produced  or  tendered  in  evi- 
dence any  such  writing,  knowing  the  entry  or  writing  to  be  false, 
he  shall  be  liable  for  every  offence,  on  summary  conviction,  to 
a  fine  not  exceeding  fifty  pounds  and  in  default  of  payment 
thereof  to  imprisonment  for  a  period  not  exceeding  six  months. 

Penalty  on  Falsely  Representing  a  Trade  Mark  as  Registered 

58.  (1)  Any  person  who  represents  a  trade  mark  as  regis- 
tered which  is  not  so  shall  be  liable  for  every  offence,  on  sum- 
mary conviction,  to  a  fine  not  exceeding  five  pounds. 


CYPRUS  237 

(2)  A  person  shall  be  deemed,  for  the  purposes  of  this 
enactment,  to  represent  that  a  trade  mark  is  registered,  if  he 
uses  in  connection  with  the  trade  mark  the  word  *  *  registered, ' ' 
or  any  words  expressing  or  implying  that  registration  has  been 
obtained  for  the  trade  mark. 

REPEAL :    SAVINGS 
Repeal  and  Savings 

59.  The  Ottoman  Trade  Mark  Law  dated  24  Jemaziul- 
Akhir  1288  (tenth  day  of  September,  one  thousand  eight  hun- 
dred and  seventy-one)  and  all  subsequent  amendments  thereto 
which  were  in  force  in  Cyprus  on  and  including  the  30th  day 
of  July,  1878,  are  hereby  repealed:   Provided  that  nothing  in 
this  Law  shall  be  construed  to  affect  the  validity  in  Cyprus  of 
any  trade  mark  duly  registered  under  the  provisions  of  the  said 
Law  between  the  9th  day  of  September,  1871,  and  the  30th  day 
of  July,  1878,  and  any  such  trade  mark  may  upon  proof  of  such 
registration  produced  to  the  satisfaction  of  the  Registrar  be 
registered  as  a  trade  mark  under  the  provisions  of  this  Law 
without  payment  of  any  fee  or  fees  in  connection  with  such 
registration. 

Date  of  Operation  of  the  Law 

60.  This  Law  shall  come  into  operation  on  a  day  to  be 
notified  in  the  Cyprus  Gazette. 


CZECHOSLOVAKIA 

LAW  (PROVISIONAL)  NO.  471  OF  JULY  24, 1919 

LAW  CONTAINING  PROVISIONAL  DISPOSITIONS  FOB  THE  PROTECTION 
or  MARKS  OP  MANUFACTURE  OR  OP  COMMERCE 

ARTICLE  1.  Marks  of  manufacture  that,  until  the  day  on 
which  the  present  law  has  been  promulgated,  have  been  regis- 
tered by  one  of  the  Chambers  of  Commerce  and  of  Industry  of 
the  former  Austrian-Hungarian  Monarchy,  shall  be  protected 
in  the  territory  of  the  Czechoslovakian  Republic  with  priority 
extending  back  to  the  first  deposit,  on  condition  that  the  pro- 
prietor of  the  mark,  if  he  has  not  done  so  prior  to  the  promulga- 
tion of  the  law,  declare,  within  the  three  months  that  follow  a 
date  fixed  by  a  later  ordinance,  at  the  competent  Chamber  of 
Commerce  and  of  Industry  of  the  country,  or,  for  the  proprietor 
of  an  establishment  situated  in  a  foreign  country  granting  reci- 
procity, at  the  Chamber  of  Commerce  and  of  Industry  at  Prague, 
that  he  claims  protection  for  the  Czechoslovakian  territory. 

At  the  same  time  as  their  application,  the  applicants  shall 
deposit  three  copies  of  the  mark  whereof  the  identity  shall  be 
certified  by  the  Chamber  of  Commerce  and  of  Industry  that  has 
acted  in  the  prior  registration ;  applicants  whose  marks  are  reg- 
istered by  a  Chamber  of  Commerce  and  of  Industry  of  the  for- 
mer Austria-Hungary,  exclusive  of  the  Czechoslovakian  Repub- 
lic, shall  produce  in  addition  a  certified  extract  of  the  Trade 
Mark  Register. 

The  duration  of  protection  already  expired  shall  be  counted 
in  the  legal  period  of  ten  years. 

Marks  belonging  to  foreigners  and  that  have  been  regis- 
tered only  by  the  Chamber  of  Commerce  and  of  Industry  at 
Vienna,  or  by  that  of  Budapest,  shall  be  protected  on  petition 
in  all  the  territory  of  the  Czechoslovakian  Republic,  but  under 
the  reservation  of  the  rights  of  third  parties  for  the  part  of 
the  territory  in  which  they  have  not  heretofore  been  protected. 

ART.  2.  The  Law  of  June  27,  1908  (ReichsgesetzUatt,  No. 
123)  is  abrogated  insofar  as  it  attributes  matters  of  marks  to 
the  Ministry  of  Public  Works. 

ART.  3.  The  ordinance  issued  June  24,  1915,  by  the  Minis- 
try of  Public  Works  in  agreement  with  the  Ministry  of  Com- 
merce (ReichsgesetzUatt,  No.  177)  is  abrogated,  and  the  delay 
fixed  in  §1,  final  paragraph,  of  the  said  ordinance,  shall  com- 


CZECHOSLOVAKIA  239 

mence  to  run  on  the  date  on  which  the  present  law  shall  become 
of  effect. 

ART.  4.  The  Austrian  laws  of  January  6,  1890*  (Reichs- 
gesetzblatt,  No.  19),  and  March  17, 1913  (Reichsgesetzblatt,  No. 
65),  and  the  law  of  July  30,  1895f  (Reichsgesetzblatt,  No.  108), 
shall  remain  in  force  with  the  following  modifications,  and  they 
are  at  the  same  time  declared  applicable  to  all  territory  of  the 
Czechoslovakian  State. 

ART.  5.  The  law  of  January  6,  1890*  (Reichsgesetzblatt, 
No.  19),  modified  by  that  of  March  17,  1913  (Reichsgesetzblatt, 
No.  65),  is  modified  as  follows : 

§3,  No.  1,  is  replaced  by  the  following  provision:  "that  are 
composed  exclusively  of  portraits  or  of  names  of  the  President 
of  the  Eepublic  or  of  other  persons  that  have  been  honored  by 
the  State  and  are  generally  known." 

§4  is  replaced  by  the  following  provision :  * '  Marks  that  have 
as  elements  the  portrait  or  the  names  of  the  President  of  the 
Eepublic  or  of  other  persons  that  have  been  honored  by  the 
State  and  are  generally  known,  or  public  arms,  or  a  distinction, 
may  be  registered  only  if  the  right  of  usage  of  these  private 
insignia  has  been  previously  established  in  conformity  with  the 
dispositions  in  force." 

§15,  the  words:  "five  florins"  are  replaced  by  "fifty 
crowns." 

Actions  of  which  it  is  a  question  in  §30,  paragraph  1,  must 
be  lodged  anew. 

ART.  6.  §32,  paragraphs  4,  33,  34,  and  35,  of  the  law  of 
January  6,  1890  (Reichsgesetzblatt,  No.  19),  and  Art.  5,  para- 
graphs 3,  6,  and  7,  of  the  law  of  March  17,  1913  (Reichsgesetz- 
blatt, No.  65),  are  abrogated. 

ART.  7.  The  law  of  July  30,  1895  (Reichsgesetzblatt,  No. 
108),  is  modified  as  follows: 

The  next  to  the  last  paragraph  of  §4  is  replaced  by  the  fol- 
lowing provision:  "Delays  expired  subsequent  to  October  28, 
1918,  are  prolonged  by  six  months,  counting  from  the  day  on 
which  the  mark  has  been  deposited  in  the  country." 

The  first  paragraph  of  §5  is  replaced  by  the  following  pro- 
vision: "He  that  has  no  fixed  residence  or  domicile  within  the 
territory  of  the  Republic  may  avail  himself  of  the  rights  stipu- 
lated in  the  before  cited  laws  or  in  the  present  law  only  on  con- 
dition of  appointing  an  attorney  in  the  Czechoslovakian  Re- 
public. 

§§8  and  9  are  abrogated. 

*  For  text  of  law  referred  to,  see  Austria, 
t  The  law  of  1895  is  explanatory  only. 


240  CZECHOSLOVAKIA 

ART.  8.  Hungarian  Legislative  Articles  2  of  1890  and  41  of 
the  year  1895  are  abrogated. 

ART.  9.  The  present  law  shall  become  of  effect  the  day  on 
which  it  shall  be  promulgated.* 

ART.  10.  The  Minister  of  Commerce  and  the  Minister  of 
Justice  are  charged  with  the  execution  of  the  present  law. 

*  August  11,  1919. 


DANZIG 

(FREE  CITY  OF  DANZIG) 
LAW  OF  JULY  14,  1921* 

II.  MAEKS  OP  MANUFACTURE  AND  OF  COMMERCE 
SECTION  13.  Marks  of  manufacture  of  which  a  person 
makes  use  in  his  commercial  business  for  distinguishing  his 
goods  from  those  of  others  shall  be  protected  through  registra- 
tion in  the  Trade  Mark  Register  in  conformity  with  the  present 
law. 

There  shall  be  excepted : 

a)  Free  marks; 

b)  Marks  lacking  in  distinctive  character; 

c)  Marks  that  contain  the  Arms  of  the  State  or  those  of  a 
locality,  of  a  commune,  or  of  a  communal  association  situated 
in  the  Free  State,  unless  the  proprietor  presents  the  authoriza- 
tion of  the  State,  of  the  commune,  or  of  the  association ; 

d)  Marks  that  contain  scandalous  representations  or  indi- 
cations not  corresponding  to  actual  circumstances  and  possible 
of  inducing  to  error; 

e)  Marks  that  contain  the  Red  Cross  of  Geneva  or  the 
words  "  Rotes  Kreuz,"  unless  the  owner  of  the  mark  furnish 
proof  that  he  is  authorized  to  this  effect  by  the  Government  of 
the  Free  State. 

SEC.  14.  The  owner  of  a  registered  mark  shall  have  the 
exclusive  right  of  affixing  the  mark  to  the  goods  of  the  kind 
declared,  or  to  their  wrappings  or  containers ;  of  putting  on  the 
market  the  goods  thus  marked,  of  offering  them  for  sale,  and 
of  affixing  the  mark  to  communications  addressed  to  his  cus- 
tomers, or  to  his  announcements. 

SEC.  15.  The  protection  of  a  mark  does  not  extend  its 
effect ; 

a)  As  regards  him  that  affixes  only  his  name,  his  commer- 
cial firm,  his  domicile,  as  well  as  indications  concerning  the 
mode,  the  time,  and  the  place  of  manufacture,  or  the  quality, 
the  purpose  or  the  price,  the  quantity  or  the  weight  of  the  mer- 
chandise, upon  goods  or  their  wrappings  or  their  containers,  or 
who  makes  use  of  similar  indications  in  communications  to  his 
customers  or  in  his  announcements ; 

b)  With  regard  to  him  in  whose  favor  the  mark  has  been 

*  Matter  omitted — indicated  by  asterisks — refers  to  patents  only. 


242  DANZIG 

registered  in  virtue  of  a  prior  deposit  for  the  same  goods  or 
for  goods  of  the  same  class. 

SEC.  16.  The  right  resulting  from  registration  may  pass 
to  a  third  party  only  along  with  the  enterprise  to  which  the 
mark  pertains. 

SEC.  17.  The  duration  of  the  protection  of  the  mark  is 
unlimited.  It  shall  commence  upon  the  day  following  that  of 
the  deposit.  Except  in  the  case  of  renunciation,  the  protection 
shall  be  extinguished  on  the  expiration  of  every  ten  years  un- 
less, within  the  three  months  that  follow  the  end  of  this  period, 
there  shall  have  been  paid  a  fee  of  50  marks.  The  payment  of 
the  fee  before  the  commencement  of  the  term  shall  be  inadmis- 
sible and  without  legal  effect. 

SEC.  18.  Application  for  registration  of  a  mark  of  manu- 
facture shall  be  presented  in  writing  and  only  at  the  Bureau  of 
Industrial  Property  at  the  District  Tribunal  (Amtsgericht)  of 
Danzig.  Each  mark  must  constitute  the  object  of  a  separate 
deposit.  The  deposit  must  contain  an  exact  representation  of 
the  mark,  the  application  for  registration  of  a  mark,  as  well  as 
an  indication  of  the  establishment  in  which  the  mark  will  be 
employed  and  of  the  goods  for  which  it  is  intended.  The  goods 
shall  be  indicated  in  accordance  with  classes  whose  extent  and 
number  shall  be  fixed  by  the  Senate.  The  representation  may 
be  accompanied  by  a  description  of  the  mark. 

If  it  is  a  question  of  a  mark  belonging  exclusively  to  a 
foreign  enterprise,  there  shall  be  included  in  the  deposit  proof 
that  the  depositor  has  had  the  same  mark  protected  abroad. 
At  the  moment  of  the  deposit  there  must  be  paid  a  fee  of  50 
marks  if  the  mark  is  intended  for  goods  of  a  single  class.  If 
the  mark  is  intended  for  merchandise  of  several  classes,  it  will 
be  necessary  to  add  for  each  additional  class  a  fee  of  10  marks. 
If,  during  the  term  of  protection,  the  effects  of  registration  are 
to  be  extended  to  other  classes  of  goods  it  will  be  necessary  to 
proceed  to  a  new  registration. 

SEC.  19.  If  the  deposit  fulfills  the  legal  requirements  (Sees. 
18  and  33),  the  mark  shall  be  inscribed  in  the  Register  without 
there  being  occasion  to  inquire  if  it  is  protectable  (Sec.  13). 
The  Register  must  contain:  a  representation  of  the  mark,  a 
reference  to  the  description  that  is  to  be  furnished,  the  name 
and  the  domicile  of  the  depositor  or  of  his  constituted  attorney, 
indication  of  the  enterprise  and  list  of  the  goods  for  which  the 
mark  is  intended,  the  date  of  the  deposit,  the  expiration  of  the 
mark,  and,  finally,  any  modification  duly  shown  in  attested  form, 
with  proof  in  support,  and  concerning  the  personality  of  the 
owner  of  the  mark. 


DANZIG  243 

SEC.  20.  Any  person  shall  have  the  right  of  demanding 
the  cancellation  of  a  mark  if,  at  the  time  of  the  decision  as  to  the 
complaint  lodged  to  this  end,  either  the  mark  is  not  protectable 
in  accordance  with  Sec.  13,  or  the  line  of  business  to  which  it 
belongs  does  not  exist. 

The  right  of  demanding  cancellation  shall  belong,  in  addi- 
tion, to  him  in  favor  of  whom  the  mark  is  registered  in  virtue 
of  a  prior  deposit  for  the  same  goods  or  for  goods  of  the  same 
class.  If  this  condition  concerns  only  part  of  the  goods,  then 
the  right  of  demanding  cancellation  shall  be  reduced  in  the  same 
proportion. 

SEC.  21.  The  application  of  the  provisions  of  the  present 
law  is  not  barred  by  modifications  introduced  in  names,  firms, 
signs,  arms  of  third  persons  or  in  any  other  designations  of 
goods,  provided  that,  despite  these  modifications,  there  exists 
the  possibility  of  confusion  in  trade. 

III.    GENERAL  PROVISIONS 

SEC.  22.  Whoever  is  not  domiciled  in  the  territory  of  the 
Free  City  may  not  effect  a  deposit  save  through  the  interme- 
diary of  an  attorney  domiciled  within  the  said  territory ;  neither 
may  he  safeguard  the  rights  emanating  from  registration,  save 
through  the  intermediary  of  such  an  attorney.  Besides,  he  shall 
be  authorized  to  designate  one  or  several  attorneys.  The  at- 
torney must  prove  his  qualification  by  means  of  a  written  power 
of  attorney.  If  several  attorneys  have  been  appointed,  they 
may  exercise  their  power  either  together  or  separately.  Any 
provision  to  the  contrary  inserted  in  the  power  shall  not  be 
taken  into  consideration. 

SEC.  23.  When  the  registration  has  been  effected,  the  Bu- 
reau of  Industrial  Property  shall  deliver,  in  the  name  of  the 
depositor  or  of  his  assign,  a  certificate  wherein  it  shall  declare, 
in  a  manner  plainly  evident,  that  the  registration  has  taken 
place  upon  application  "  without  official  verification  of  the  ap- 
plication as  to  protectability." 

SEC.  24.  Registers  shall  be  kept  by  the  Bureau  of  Indus- 
trial Property. 

Any  person  may  consult  the  Registers,  as  well  as  the  de- 
liberations that  are  the  bases  of  registration. 

The  inscriptions  in  the  Registers  shall  be  published,  in  the 
form  of  monthly  synoptic  tables,  at  the  expense  of  the  persons 
protected,  in  the  official  organ  intended  for  publications  of  the 
Senate. 

SEC.  25.  For  procedure  relative  to  appeal  against  deci- 
sions of  the  Bureau  of  Industrial  Property  there  shall  be  ap- 
plied the  provisions  of  the  law  of  the  Realm  (Reich)  as  to  mat- 


244  DANZIG 

ters  of  non-contentious  jurisdiction. 

SEC.  26.  In  whatever  concerns  exceptions  to  the  judgment 
of  the  judicial  authority,  and  as  regards  notifications,  there  shall 
be  applied  the  provisions  concerning  non-contentious  jurisdic- 
tion; besides,  and  insofar  as  there  be  need,  and  particularly  in 
whatever  concerns  restitution  to  former  state,  there  shall  be 
applied  the  provisions  that  apply  in  civil  procedure. 

SEC.  27.  Whoever,  knowingly  or  through  negligence,  in- 
jures a  right  protected  by  a  registration  effected  by  virtue  of 
the  present  law  shall  be  bound  to  indemnify  the  party  interested. 

SEC.  28.  Whoever,  knowingly,  injures  a  right  protected  by 
a  registration  effected  by  virtue  of  the  present  law  shall  be 
punished  by  a  fine  or  by  imprisonment,  or  by  the  two  penalties 
together. 

Criminal  prosecution  shall  take  place  only  upon  complaint. 
The  complaint  may  be  withdrawn. 

If  a  penalty  is  pronounced,  the  judgment  may  order  that 
the  condemnation  be  published  at  the  cost  of  the  guilty  party. 
In  such  a  case,  the  judgment  shall  fix  the  mode  of  publication 
and  the  term  within  which  it  must  be  made. 

SEC.  29.  If  the  injured  party  intervenes  in  the  criminal 
procedure  as  a  civil  party,  he  may  demand  that  the  judge  fix, 
during  the  course  of  the  procedure,  punitive  damages,  which 
shall  be  paid  to  him.  If  these  damages  are  allowed  him,  the 
party  injured  must  renounce  any  other  indemnity. 

SEC.  30.  Actions  for  violation  of  a  right  protected  by 
virtue  of  the  present  law  shall  become  outlawed  after  three 
years,  counting  from  each  of  the  acts  that  give  occasion  to  such 
action. 

SEC.  31.  For  all  civil  actions  based  upon  the  present  law, 
the  competent  tribunal  shall  be  the  Landgericht  of  the  Free  City 
of  Danzig,  whatever  be  the  value  of  the  object  in  litigation. 

SEC.  32.  The  Senate  is  authorized  to  promulgate  other  pro- 
visions concerning  the  conditions  and  formalities  of  a  deposit. 

SEC.  33.  The  Senate  of  the  Free  City  of  Danzig  may  at 
any  time  increase  or  diminish  the  fees  fixed  by  the  present  law ; 
it  may  likewise  decide  what  shall  be  the  modes  of  payment  that 
may  be  assimilated  to  payments  in  cash. 

It  may  order  that  inscriptions  on  the  Register  be  published 
at  short  intervals  and  that  the  expenses  of  these  publications 
(Sec.  24,  par.  3)  be  borne  in  whole  or  in  part  by  the  State. 

SEC.  34.  Rights  and  contracts  that  emanate  from  a  deposit 
effected  in  Germany  up  to  the  entry  into  force  of  the  present 


DANZIG  245 

law  shall  be  recognized  as  valid  in  the  Free  City,  in  conformity 
with  German  legislation. 

SEC.  35.  Citizens  or  subjects  of  foreign  countries  shall  en- 
joy, within  the  meaning  of  this  law,  in  the  Free  City,  without 
further  formality,  the  same  rights  as  these  countries  them- 
selves grant,  in  case  of  reciprocity,  to  the  citizens  of  the  Free 
City. 

SEC.  36.  The  present  law  shall  become  effective  on  the  day 
on  which  it  shall  be  published.* 


*  Published  July  20,  1921. 


DENMARK 

LAW  OF  APRIL  11,  1890,  AS  AMENDED  DECEMBER  19, 
1898,  MARCH  29,  1904,  AND  JANUARY  12,  1915* 

ARTICLE  1.  Whoever  carries  on  within  the  Kingdom  a 
manufacture  or  a  trade,  agriculture,  mining,  commerce  or  other 
industry,  may,  in  addition  to  the  right  belonging  to  him  of  using 
his  firm  name  or  the  name  of  any  real  property  belonging  to 
him  as  trade  marks,  obtain  the  sole  right,  by  means  of  a  regis- 
tration in  accordance  with  this  law,  to  distinguish  his  goods 
from  others,  by  means  of  a  special  trade  mark.  This  right  shall 
embrace  all  kinds  of  his  goods,  unless  it  shall  have  been  re- 
stricted to  special  classes  on  registration. 

The  marks  are  to  be  placed  on  the  goods  themselves  or  on 
their  coverings  (wrapper,  case,  etc.). 

ART.  2.  The  Register  of  Trade  Marks,  as  hitherto,  shall  be 
kept  for  the  whole  Kingdom  by  a  duly  appointed  Registrar  in 
Copenhagen. 

ART.  3.  Any  person  desiring  to  register  a  trade  mark  must 
either  deliver  an  application  to  the  Registrar,  or  send  the  same 
by  post,  together  with  a  clear  description  of  the  same,  giving 
his  name  or  firm,  calling  and  postal  address,  and  also  state 
therein  whether  the  marks  in  question  are  to  apply  only  to 
special  classes  of  goods ;  in  this  latter  case,  to  which. 

With  the  application  there  must  be  delivered: 

1)  A  representation  of  the  mark  on  durable  paper,  in  tripli- 
cate, of  at  most  10  centimeters  in  height  (3.82  Tommer)  and  15 
centimeters  (5.74  Tommer)  in  breadth; 

2)  Two  blocks  (electrotypes)  of  the  same  size  necessary  for 
printing  the  mark; 

3)  Forty  (40)  kroner  for  payment  of  the  registration  and 
publication. 

The  Registrar  shall  send  as  soon  as  possible  to  the  appli- 
cant, or  to  the  corresponding  address  furnished  by  the  latter,  a 
written  acknowledgment  of  the  receipt  of  the  application  on 
which  the  day  and  hour  of  the  application  shall  be  duly  marked. 
This  certificate  shall  have  a  copy  of  the  mark  attached  thereto. 
ART.  4.    A  trade  mark  shall  not  be  registered: 
1)  If  it  lacks  particular  characteristics — in  the  determina- 
tion of  which  all  circumstances  in  question  shall  be  taken  into 
consideration,  particularly  so  the  duration  of  use  that  may  have 

*  For  further  amendment  see  also  Sec.  2  of  Law  of  December  19,  1898,  following. 


DENMAEK  247 

been  made  of  the  mark — or,  if  it  consists  entirely  of  words  that 
according  to  ordinary  conception  are  adapted  to  serve  as  an 
indication  of  the  locality  where  the  goods  were  manufactured  or 
dealt  in,  the  time  when  the  goods  were  manufactured,  the  nature, 
quality,  purpose,  quantity  or  price  of  the  same ;  or  when  in  con- 
sequence of  vernacular  language  or  idioms  commonly  employed 
in  the  respective  commercial  circles  it  is  known  as  a  designation 
for  the  goods  themselves  or  for  the  goods  emanating  from  a 
producer  other  than  the  applicant; 

2)  If,  without  authorization,  it  contains  another  name  or 
another  firm  than  that  of  applicant,  or  the  name  of  another 
person's  real  estate; 

3)  If,  without  authorization,  it  contains  a  national  coat  of 
arms  or  emblem,  or  a  Danish  municipal  coat  of  arms  or  emblem ; 

4)  If  it  contains  representations  apt  to  cause  offence ;  and 

5)  If  it  is  absolutely  identical  with  a  trade  mark  already 
registered  by  another  or  for  the  registration  of  which  an  ap- 
plication has  already  been  duly  filed;  or  if  it  discloses  such  a 
resemblance  to  the  same  that  the  marks  taken  as  a  whole  may 
be  readily  confounded  with  each  other,  notwithstanding  dif- 
ferentiating details;  the  registration  shall  not,  however,  be  re- 
fused if  the  similarity  lies  in  the  points  detailed  in  Art.  7,  or  if 
the  marks  relate  to  different  classes  of  goods. 

ART.  5.  If  the  registration  be  refused,  notice  thereof  shall 
immediately  be  given  to  the  applicant  in  writing,  together  with 
the  reasons  for  refusal  (in  accordance  with  Art.  3),  If  the  ap- 
plicant consider  the  decision  erroneous,  he  may,  within  two 
months,  submit  the  decision  of  the  Registrar  to  the  Ministry  of 
the  Interior,  without  prejudice  to  his  right  to  have  the  matter 
determined  in  a  court  of  law. 

ART.  6.  The  registration  shall  take  place  provided  that  no 
obstacles  to  the  same  are  presented,  and  the  publication  in  con- 
nection therewith  shall  take  place  at  the  earliest  possible  mo- 
ment in  the  Statstidende  and  in  the  Registreringstidende  pub- 
lished by  the  Administration  of  Public  Works. 

ART.  7.  If  a  registered  trade  mark  contains  such  signs  or 
words  that,  according  to  section  4,  it  cannot  be  separately  regis- 
tered, or  when  the  same  consists  partially  or  entirely  of  signs 
and  marks  that  are  commonly  employed  in  certain  branches  of 
establishments,  other  persons  shall  not  thereby  be  precluded 
from  employing  such  designations  as  trade  marks  or  as  a  part 
thereof. 

ART.  8.  The  right  to  a  registered  trade  mark  can  only  be 
transferred  in  connection  with  the  business  for  which  it  is  used. 
Should  any  person  transfer  his  business  to  another,  the  right  to 


248  DENMARK 

the  registered  mark  passes  to  the  buyer  unless  a  special  ar- 
rangement therefor  be  made  to  the  effect  that  the  vendor  retain 
the  right  to  the  mark  or  that  both  parties  shall  use  the  same 
mark  for  different  classes  of  goods. 

ART.  9.  The  protection  for  a  registered  mark  expires  un- 
less the  application  for  renewal  be  made  within  ten  years, 
reckoned  from  the  date  of  registration  for  the  first  term,  and 
within  ten  years  from  the  last  date  of  renewal  for  the  following 
ones.  The  Registrar  shall  give  notice  by  registered  letter  to 
the  applicant  or  his  agent,  at  least  three  months  before  the  ex- 
piry of  the  above  named  time,  that  the  protection  of  the  mark 
shall  cease  if  the  renewal  be  not  made  in  time. 

Any  person  desiring  to  renew  the  registration  of  his  trade 
mark  must  file  a  written  application  in  the  form  prescribed  by 
Art.  3,  together  with  a  facsimile  of  the  mark  and  ten  (10)  kroner 
for  the  registration  tax.  If  in  the  meantime  the  mark  be  regis- 
tered for  another  person,  the  applicant  for  renewal  must,  with 
his  application,  establish  his  right  to  the  same. 

The  renewal  shall  be  entered  in  the  Register  as  speedily  as 
possible,  and  the  applicant  be  informed  of  the  completion  as  pre- 
scribed in  Art.  3. 

Should  the  Registrar  find  the  application  to  be  defective,  he 
shall  refuse  the  renewal ;  in  the  event  of  an  appeal  recourse  shall 
be  made  to  Art.  5. 

ART.  10.  If,  in  case  of  an  appeal,  the  Ministry  of  the  In- 
terior finds  that  a  trade  mark  should  not  have  been  registered, 
having  regard  to  the  provisions  of  Art.  4,  Nos.  3  and  4,  its  re- 
moval from  the  Register  may  be  ordered,  without  prejudice  to 
the  right  of  the  applicant  to  submit  this  decision  to  the  courts. 

If  there  be  registered  a  trade  mark  that  consists  only  of 
figures  or  marks  that  are  used  in  a  certain  commercial  line,  the 
cancellation  of  such  may  be  demanded  by  anyone  that  carries  on 
a  similar  business.  Both  in  this  case  as  well  as  that  in  which 
any  party  considers  that  the  registration  of  a  trade  mark  will 
cause  him  damage,  the  removal  of  the  mark  in  question  shall 
depend  on  a  judicial  decision. 

In  case  the  registration  of  a  trade  mark  is  refused  on  the 
ground  of  Art.  4,  No.  5,  and  if  applicant,  upon  the  lodging  of  a 
suit  against  the  owner  of  the  previously  applied  for  or  regis- 
tered mark,  proves  that  this  mark  has  originally  been  used  by 
him,  and  that  the  same  has  been  appropriated  by  other  parties, 
then  he  may  be  declared,  by  way  of  judgment,  to  be  entitled  to 
have  the  mark  registered  for  himself  and  the  exclusive  right  to 
the  use  of  the  mark  may  be  given  him,  which  mark  he  may  claim, 
since  the  mark  has  been  applied  for  by  other  parties,  provided 


DENMARK  249 

that  he  (applicant)  institutes  an  action  within  one  year  from  the 
time  of  the  publication  of  the  registration  of  the  mark  in  the 
Statstidende. 

ART.  11.  If  the  registration  of  a  mark  be  declared  void, 
or  the  protection  for  a  registered  mark  has  expired  or  the  per- 
son thereto  entitled  desire  it,  such  mark  shall  be  removed  from 
the  Register  and  the  erasure  published  in  the  papers  named 
in  Art.  6. 

If  a  mark  be  canceled  by  command  of  the  Ministry  of  the 
Interior,  conformably  with  Art.  10,  the  Registrar  shall  com- 
municate the  circumstances  to  the  owner  of  the  mark. 

ART.  12.  Any  person  employing  on  goods  exposed  for  sale 
or  on  the  packages  of  the  same  the  name  or  firm  of  another,  or 
the  name  of  real  property  belonging  to  another,  or  the  registered 
trade  mark  of  another,  and  also  any  person  selling  such  goods, 
can  on  the  demand  of  the  injured  party  be  legally  restrained 
from  further  employing  the  mark  in  question,  and  from  selling 
the  goods  so  marked. 

If,  however,  he  knew  that  he  was  doing  an  injustice  to 
another,  he  may  be  sentenced  to  a  fine  of  from  200  to  2,000 
kroner,  and,  in  case  of  repetition,  to  the  same  penalty  or  im- 
prisonment, and  he  may  also  be  compelled  to  give  compensation 
for  the  damages  caused,  and  also  to  remove  such  marks  from 
all  goods  and  packages  that  are  in  his  possession  or  stand  at 
his  disposal,  or  to  destroy  the  same. 

ABT.  13.  The  regulations  of  Art.  12  also  apply,  if  the  name 
or  the  firm,  or  the  name  of  real  property  belonging  to  another, 
or  the  registered  trade  mark,  be  reproduced,  not  completely,  in 
fact,  but  still  so  nearly  so  that,  in  spite  of  single  small  differ- 
ences, one  is  easily  mistaken  for  the  other. 

ART.  14.  Where  reciprocity  is  granted,  it  may  be  pro- 
claimed by  Royal  Decree  that  the  provisions  of  the  above  law 
shall  apply  to  those  who  carry  on  any  of  the  businesses  enu- 
merated, in  Art.  1,  outside  the  Kingdom.  In  this  case  the  para- 
graphs of  the  law  observing  the  following  conditions  shall  come 
into  application  as  regards  the  trade  mark  to  be  registered : 

1)  The  application  must  be  accompanied  by  a  proof  wherein 
it  is  shown  that  the  applicant  has  fulfilled  all  the  requisite  con- 
ditions for  obtaining  protection  of  the  trade  mark  in  his  respec- 
tive foreign  State. 

2)  The  applicant  shall  accept  the  Maritime  and  Commer- 
cial Court  at  Copenhagen  as  the  competent  authority  and  shall 
nominate  in  addition  an  attorney  resident  within  the  Kingdom 
who  can  appear  for  him. 

3)  The  trade  mark  will  not  be  granted  to  a  greater  extent 


250  DENMARK 

nor  protected  for  a  longer  time  than  in  the  foreign  state. 

The  following  regulations  can  be  applied  by  Royal  Decree 
for  those  marks  that  are  registered  in  a  State  that  accords 
special  privilege  to  Danish  marks. 

4)  ...  (Repealed  by  law  of  January  12,  1915.  .   .   . 

5)  Should  any  person  within  four  months  at  most  after  the 
mark  is  published  in  a  foreign  State  petition  the  registration  in 
this  Kingdom,  such  application  shall  be  regarded  as  having 
been  made  simultaneously  with  that  in  the  foreign  State. 

6)  Should  registration  be  refused  under  No.  5  of  Art.  4 
and  the  applicant  can  prove  to  the  court,  as  against  the  owner 
of  the  earlier  registered  mark,  that  the  same  was  originally  used 
by  him  and  that  the  other  party  had  merely  appropriated  the 
same,  he  shall  obtain  by  order  of  the  court  the  registration  of 
his  mark  with  the  sole  right  of  employing  it  on  the  goods  to 
which  he  had  formerly  applied  it  at  the  time  the  opposing  mark 
was  registered;  this  applies,  however,  only  if  he  make  applica- 
tion in  the  matter  within  six  months  after  the  commencement 
of  the  registration  of  the  opposing  mark.    No  limitation,  how- 
ever, of  the  rights  enumerated  in  Art.  10,  paragraph  3,  will  be 
made  in  this  case. 

7)  Should  a  convention  be  concluded  with  any  country 
whose  legislation  on  trade  marks  coincides  with  this  law,  old 
trade  marks  that  in  such  country  are  legally  registered  by  those 
carrying  on  business  in  iron  or  timber  and  which  consist  solely 
or  mainly  of  ordinary  figures,  letters  or  names,  shall,  if  pro- 
tected in  the  foreign  country,  enjoy  the  same  protection  in  this 
Kingdom,  so  that  others  shall  neither  be  allowed  to  use  these 
names,  letters  or  figures  on  similar  goods  nor  designate  their 
firm  or  name  with  the  same  initial  letters.    The  registration 
having  this  effect  shall,  however,  only  take  place  within  a  cer- 
tain time  which  will  be  more  precisely  fixed  by  Royal  Decree 
and  the  advertisement  of  the  registration  shall  contain  the  class 
of  goods,  as  well  as  the  grounds,  for  the  registration. 

ART.  15.  Rules  may  be  prescribed  by  Royal  Decree  that 
the  protection  given  by  means  of  this  law  may  be  also  enjoyed 
upon  such  conditions  as  are  described  in  detail  by  the  decree  in 
question,  by  such  parties  as  carry  on  business  in  Iceland  or  the 
Danish  West  Indies,*  such  as  dealt  with  in  Art.  1. 

ART.  16.  More  detailed  regulations  for  the  arrangement, 
form  and  utilization  of  the  marks,  the  publication  of  that  part 
of  the  Registreringstidende  treating  thereof,  as  well  as  the  ren- 
dering of  accounts  to  the  State  Treasury,  will  be  issued  by  the 
Minister  of  the  Interior,  who  shall  also  appoint  the  Registrar. 

*  Now  Virgin  Islands  of  the  United  States,  which  see. 


DENMARK  251 

ART.  17.  Matters  of  civil  right  that  shall  arise  with  refer- 
ence to  the  regulations  contained  in  the  above  law  shall  be 
regarded  as  commercial  matters. 

Public  actions  brought  under  Art.  12,  paragraph  2,  shall  be 
referred  to  the  public  police  court  and  complaint  may  be  made 
by  anyone  claiming  injury  through  breach  of  the  law. 

ART.  18.  Any  and  every  person  shall  be  allowed  to  obtain 
information  by  inspection  of,  or  by  extracts  from,  the  Eegister, 
but  the  designs  in  the  same  shall  not  be  reproduced. 

Two  (2)  kroner  shall  be  paid  to  the  State  Treasury  for  an 
extract  from  the  Register  or  an  original  application.  The  Regis- 
ter may  be  inspected  free  of  expense. 

ART.  19.  The  above  law  shall  come  into  force  in  place  of 
the  one  promulgated  on  July  2, 1880 ;  it  shall  not,  however,  affect 
trade  marks  registered  under  that  law. 

The  Government  shall  be  authorized  by  Royal  Decree  to  put 
this  law  in  force  in  the  Faroe  Islands,  with  special  regulations 
suitable  to  the  conditions  of  these  islands.  All  persons  are  to 
be  bound  by  this  law  hereafter. 


LAW  (AMENDATORY)  OF  DECEMBER  19,  1898 

SECTION  1 
.......... 

SECTION  2 

This  law  shall  take  effect  four  months  from  its  publication 
in  the  Law  Gazette  (Lovtidenden) . 

If  a  business  man,  after  the  publication  of  this  law,  law- 
fully uses  a  special  trade  mark  that  consists  exclusively  or  prin- 
cipally of  words  devoid  of  peculiar  form,  but  which  can  be  con- 
sidered as  a  specially  invented  designation  for  certain  kinds  of 
goods,  for  which  he  uses  the  trade  mark,  and  if  he  makes  appli- 
cation for  trade  mark  within  three  months  after  the  law  takes 
effect,  in  the  manner  prescribed  by  Sec.  3  of  the  Law  of  April 
11,  1890,  no  one  that  has  not  made  prior  use  of  the  mark  by 
reason  of  a  prior  application  can  obtain  the  right  to  the  same 
mark  or  to  marks  that  resemble  same  or  can  be  confounded 
therewith. 


DOMINICAN  REPUBLIC 

LAW  OF  MAY  16, 1907,  AS  AMENDED  JULY  18, 1912,  AND 
NOVEMBER  14,  1914 

ARTICLE  1.  Any  manufacturer  or  merchant  shall  have  the 
right  to  distinguish  his  wares  or  products  by  means  of  special 
marks. 

ART.  2.  Marks  of  manufacture  may  be  made  up  of  any- 
thing not  prohibited  by  this  law  and  which  may  distinguish  cer- 
tain articles  from  others  identical  or  similar  of  different  origin. 
Any  name,  signature  or  firm,  letters  or  ciphers,  will  serve  for 
this  purpose  only  if  used  in  a  distinctive  form.  Marks  of  manu- 
facture may  be  used  on  the  articles  themselves,  or  on  the  wrap- 
pings or  packages  which  may  contain  them. 

Guarantees 

ART.  3.  With  the  object  of  guaranteeing  the  ownership 
and  the  exclusive  use  of  said  marks,  it  is  indispensable  that  they 
be  registered,  deposited,  and  published  in  accordance  with  the 
terms  of  the  present  law. 

Application 

ART.  4.  In  order  to  effect  registry  it  will  be  necessary  that 
the  applicant,  or  whoever  legally  represents  him,  shall  direct 
to  the  Secretariat  of  State  for  Public  Industry,  on  stamped 
paper  of  the  third  class,  an  application  that  shall  be  accom- 
panied by  two  or  more  copies  or  facsimiles  of  the  mark,  and, 
also,  a  detailed  description  of  what  constitutes  the  mark. 

PARAGRAPH.  The  application  shall  likewise  contain  a  decla- 
ration concerning  the  class  of  industry  or  trade  for  which  it  is 
intended,  the  calling  of  the  petitioner,  and  the  place  of  his  resi- 
dence. 

Grant  of  Certificate  of  Registration 

ART.  5.  The  Chief  Clerk  of  the  Ministry  of  Industry  and 
Public  Works*  shall  certify  each  one  of  the  models,  the  day  and 
hour  upon  which  they  are  received,  and,  in  case  of  the  registra- 
tion being  ordered,  will  deposit  one  of  said  models  in  the  ar- 
chives of  the  Ministry  and  will  deliver  one  to  the  interested  per- 
son, together  with  the  certificate  of  registration  duly  numbered. 

Publication 

PARAGRAPH.  There  shall  be  published  in  the  Gaceta  Oficial 
the  certificate  of  registration,  which  shall  contain  the  charac- 

*  Articles  4  and  8  (amendatory)  mention  the  procedure  as  being  supervised  by 
the  Secretariat  of  State  for  Public  Industry. 


DOMINICAN  REPUBLIC  253 

teristic  features  of  the  mark,  copied  from  the  declaration  re- 
quired by  Art.  4. 

Prohibitations 

ART.  6.  Registration  shall  be  forbidden  of  such  marks  ai 
contain : 

1)  The  coat  of  arms,  medals,  or  insignia,  either  public, 
official,  national,  or  foreign  except  in  the  case  of  its  due  author- 
ization previous  to  the  passage  of  this  law; 

2)  A  name  or  firm  that  the  petitioner  may  not  use  legally; 

3)  The  indication  of  a  determined  locality  or  establishment 
that  is  not  that  of  the  origin  of  the  article,  even  though  to  such 
indication  there  be  added  or  not  a  fictitious  name  or  that  of 
another ; 

4)  Words,  pictures,  or  figures  that  involve  offense  to  in- 
dividuals or  to  public  decorum ; 

5)  The  reproduction  of  any  other  mark  already  registered 
for  an  article  of  the  same  kind ; 

6)  The  total  or  partial  imitation  of  a  mark  already  regis- 
tered for  a  product  of  the  same  kind,  which  might  lead  the  con- 
sumer into  error  or  confusion. 

PARAGRAPH.  The  possibility  of  error  or  confusion  shall  be 
considered  as  such  whenever  the  differences  between  two  marks 
cannot  be  recognized  without  due  examination  or  comparison,  in 
which  event  it  is  to  be  subject  to  the  decision  of  the  Minister  of 
Industry  and  Public  Works,  assisted  by  the  Corps  of  Coun- 
cillors. 

Rules  for  Registration 

ART.  7.  In  the  registration  of  marks  of  manufacture  the 
following  rules  shall  be  observed: 

1)  Precedence  as  regards  the  day  and  hour  of  presentation 
of  the  mark  will  establish  the  preference  to  be  given  to  the  peti- 
tioner as  regards  registration.    In  the  case  of  the  simultaneous 
presentation  of  one  or  more  identical  or  similar  marks,  the  one 
shall  be  admitted  that  shall  have  been  used  or  possessed  during 
the  greater  length  of  time,  and,  this  requisite  lacking,  none  of 
said  marks  shall  be  registered  until  the  parties  concerned  shall 
modify  it; 

2)  In  the  case  of  any  doubt  existing  as  regards  the  use  or 
possession  of  a  mark,  the  Minister  of  Industry  and  Public  Works 
shall  order  that  the  parties  interested  adjust  the  question  before 
the  Commercial  Court,  and  then  he  shall  proceed  to  effect  the 
registration  in  conformity  with  the  judgment  pronounced. 

Term 

ART.  8.  The  registration  of  a  mark  shall  be  valid  to  all 
effects  for  ten,  fifteen,  or  twenty  years,  and  each  shall  be  sub- 


254  DOMINICAN  REPUBLIC 

ject  to  a  fee  that  is  fixed  in  the  following  manner :  five  pesos  for 
those  of  ten  years ;  ten  pesos  for  those  of  fifteen  years ;  and  fif- 
teen pesos  for  those  of  twenty  years. 

There  shall  not  be  accepted  in  the  Bureau  of  the  Secretary 
of  State  for  Industry  any  application  that  is  not  accompanied 
by  a  receipt  showing  that  the  party  interested  has  paid  in  some 
Office  of  the  Treasury  the  sum  that,  according  to  this  article, 
corresponds  to  it. 

This  sum  shall  remain  in  the  Office  of  the  Treasury  as  a 
deposit  until  the  Secretary  of  State  for  Public  Industry  decides 
concerning  the  application.  If  the  mark  shall  be  registered, 
said  sum  shall  pass  to  form  part  of  the  public  funds,  and,  in 
the  contrary  case,  it  shall  be  refunded  to  the  party  interested. 

On  the  expiry  of  the  term  during  which  the  registration  is 
valid,  it  may  be  renewed  through  payment  of  the  fees  that  are 
here  stipulated. 

The  registration  shall  be  considered  null  and  without  effect 
if,  within  the  term  of  one  year,  the  owner  of  the  mark  registered 
makes  no  use  of  it. 

Assignments 

ART.  9.  The  mark  may  only  be  transferred  with  the  in- 
dustry of  the  product  or  the  business  for  which  it  was  adopted, 
due  annotation  being  made  in  the  Register,  in  consideration  of 
authentic  documents.  A  like  annotation  shall  be  made,  if,  once 
the  firms  changed,  the  mark  should  still  exist.  In  both  cases  the 
publication  of  the  same  shall  be  necessary. 
Infractions — Punishments 

ART.  10.  A  fine  of  100  pesos,  gold,  to  be  turned  into  the 
Treasury,  shall  be  imposed  upon : 

1)  Anyone  that  uses  the  legal  mark  of  another  person; 

2)  Anyone  that  reproduces,  in  its  entirety  or  in  part,  in 
any  way  whatsoever,  and  without  the  consent  of  the  owner  or 
of  his  legal  representative,  any  registered  and  published  mark 
of  manufacture ; 

3)  Anyone  that  imitates  a  mark  of  manufacture  in  such  a 
way  as  to  deceive  the  consumer ; 

4)  Anyone  that  uses  such  imitation  mark; 

5)  Anyone  that  sells  or  offers  for  sale  articles  that  display 
an  imitation  mark,  provided  that  he  cannot  prove  its  origin ; 

6)  Anyone  that  makes  use  on  his  products  of  a  commercial 
name  or  that  of  a  firm  that  does  not  belong  to  him,  whether  it 
constitutes  or  not  a  part  of  a  registered  mark. 

PARAGRAPH.  To  determine  such  imitation  as  is  alluded  to 
in  numbers  4  to  6,  inclusive,  of  this  article,  it  is  not  necessary 
that  the  similarity  of  the  mark  be  complete ;  it  will  be  sufficient 


DOMINICAN  REPUBLIC  255 

that  there  be  a  possibility  of  error  or  confusion,  in  accordance 
with  the  exposition  of  number  6  or  Art.  6. 

SECOND  PARAGRAPH.  Usurpation  of  a  commercial  name  or 
that  of  a  firm,  treated  in  number  6  of  the  present  article,  will 
be  considered  as  existing  whether  the  reproduction  be  complete 
or  whether  there  be  omissions,  additions,  or  alterations,  pro- 
vided that  there  exist  the  same  possibility  of  error  or  confusion 
on  the  part  of  the  consumer. 

ART.  11.  He  shall  be  punished  by  a  fine  of  fifty  pesos  gold, 
in  favor  of  the  Treasury : 

1)  That,  without  due  authorization,  uses  in  a  mark  of  manu- 
facture the  coat  of  arms,  heraldic  insignia,  or  public  or  official 
insignia,  national  or  foreign; 

2)  That  shall  use  marks  of  manufacture  that  offend  public 
decorum ; 

3)  That  shall  use  a  mark  of  manufacture  with  indications 
of  a  locality  or  establishment  not  that  of  the  place  of  origin 
of  the  merchandise  or  product,  whether  to  this  indication  is 
united  or  not  the  name  of  another  or  a  fictitious  one ; 

4)  That  sells  or  offers  for  sale  any  article  of  merchandise 
or  product  that  bears  marks  such  as  indicated  in  numbers  1, 
2,  and  3  of  this  article,  provided  he  can  not  prove  its  origin; 

5)  That  shall  use  a  mark  of  manufacture  containing  any- 
thing personally  offensive,  or  who  sells  or  offers  for  sale  articles 
that  display  such  marks. 

ART.  12.  Judicial  action  as  a  result  of  the  offenses  men- 
tioned in  the  preceding  article  shall  be  started  by  the  Govern- 
ment Attorney  of  the  District  where  products  are  found  display- 
ing the  aforesaid  marks. 

PARAGRAPH.  The  owner  of  the  establishment  falsely  indf- 
cated,  as  well  as  any  merchant  or  manufacturer  engaged  in  the 
same  business,  shall  possess  the  right  to  register  a  complaint 
against  the  infractors  mentioned  in  number  3  of  Art.  11. 

Repetition 

ART.  13.  Repetition  will  be  punished  by  the  doubling  of 
the  fine. 

PARAGRAPH.  Repetition  shall  be  said  to  exist  when,  against 
the  same  offender,  judgment  for  a  crime  foreseen  in  the  present 
law  shall  have  been  pronounced  within  the  five  preceding  years. 

Claims  for  Damages  and  Injuries 

ART.  14.  The  above-mentioned  fines  do  not  exempt  delin- 
quents from  the  payment  of  damages  and  injuries  to  which  the 
suit  for  claims  instituted  by  the  interested  parties  may  give  rise. 


256  DOMINICAN  REPUBLIC 

Actions  for  Determining  Existence  of  False  Marks 

Sequestration 
ART.  15.     The  person  interested  may  demand: 

1)  That  there  be  instituted  an  investigation  or  examination 
to  determine  the  existence  of  false  or  imitation  marks  of  manu- 
facture or  of  goods  that  bear  such  marks ; 

2)  The  seizure  or  destruction  of  the  false  or  imitation 
marks  in  the  shops  where  they  are  manufactured  or  wherever 
they  are  found  before  being  put  into  use ; 

3)  The  seizure  and  deposit  of  goods  or  products  that  bear 
marks  similar  to  those  denominated  under  numbers  1,  2,  3,  4,  5, 
and  6  of  Art.  6. 

Guarantee  for  Payment  of  Fines  and  Indemnification 
ART.  16.  Seized  articles  shall  serve  as  a  guaranty  of  the 
payment  of  the  fine  and  the  indemnification  due  the  interested 
party,  and,  to  that  end,  after  the  destruction  of  their  marks, 
they  shall  be  sold  at  public  auction  during  the  hearing  or  law- 
suit if  they  are  liable  to  damage  or  deterioration,  or,  during  the 
execution,  an  exception  being  made  of  those  products  that  are 
harmful  to  public  health,  which  shall  be  destroyed. 

Basis  of  Action 

ART.  17.  The  seizure  or  attachment  of  falsified  products 
that  display  a  false  mark  or  a  legitimate  one  used  fraudulently, 
shall  constitute  the  basis  for  the  action. 

Authority  for  Petitioning,  Seizure  or  Attachment 
ART.  18.    Attachment  or  seizure  shall  be  brought  about  on 
petition : 

1)  Of  the  party  concerned; 

2)  Of  the  Government  Attorney  of  the  District  where  the 
falsified  goods  or  products  are  found ; 

3)  Of  the  Tax  Collectors,  provided  that  falsified  articles 
are  found  in  the  establishments  visited  by  them,  and  by  any 
authority  that,  upon  search,  shall  find  falsified  marks  or  articles. 

Sequestration  on  Initiative  of  Authorities 
ART.  19.    When  the  seizure  is  brought  about  by  the  accusa- 
tion of  some  authority,  the  owners  of  the  marks  or  their  repre- 
sentatives shall  be  notified  to  the  end  that  they  may  begin  action 
against  the  responsible  parties,  a  period  of  thirty  days  being 
granted  them  for  this  purpose,  under  pain  of  the  annulment  of 
the  seizure  in  favor  of  the  party  interested. 
Competent  Jurisdiction 

ART.  20.  The  appropriate  court  for  the  hearings  of  the 
law  suits  referred  to  by  this  law  is  that  of  the  place  of  residence 
of  the  defendant  or  that  of  the  place  where  the  goods  showing 


DOMINICAN  REPUBLIC  257 

false  or  imitation  marks  or  a  legitimate  mark  illegally  used 
are  found. 

Benefits  Accorded  to  Foreigners 

ART.  21.  Foreigners  and  nationals  whose  establishments 
are  located  without  the  Republic  shall  enjoy  the  benefits  of  this 
law  if  it  be  permitted  by  reciprocal  diplomatic  agreements  cele- 
brated between  the  Dominican  Government  and  that  of  the  place 
of  the  establishments. 

ART.  22.  The  guaranties  and  obligations  contained  in  this 
law  shall  be  applicable  to  marks  registered  previous  to  it. 

ART.  23.  This  law  annuls  that  part  of  any  other  that  may 
be  contrary  to  it. 


ORDER  NO.  12 

WHEREAS:  For  the  better  fulfillment  of  the  law  of  marks 
of  manufacture  and  of  commerce  it  is  expedient  to  regulate  the 
execution  of  some  of  their  provisions ;  and 

It  is  likewise  necessary  to  give  to  registered  marks  all  guar- 
antees to  which  they  are  entitled,  so  as  to  render  difficult  the 
falsifications  or  imitations  to  which  they  may  be  subject, 

BE  IT  RESOLVED  THAT  : 

1)  Each  mark  of  manufacture  or  of  commerce  shall  imply 
a  separate  registration,  it  not  being  possible,  in  consequence, 
to  apply  for  the  registration  of  two  or  more  in  the  same  applica- 
tion, even  when  the  owner  is  identical.    Accordingly,  each  regis- 
tration shall  imply,  likewise,  the  issuance  of  the  corresponding 
certificate  of  ownership. 

2)  The  transfer  or  assignment  of  a  registered  mark  shall 
be  entered,  in  the  cases  provided  for  in  Art.  9  of  the  law,  on 
petition  in  writing  of  the  owner  thereof.    When  it  be  not  this 
one  that  solicits  the  entry  of  the  transfer,  the  party  interested 
shall  include,  in  the  special  petition  that  he  shall  present,  an 
authentic  document  that  shall  accredit  the  assignment  of  the 
rights  inherent  to  the  first  proprietor. 

3)  In  order  that  the  successors  of  an, owner  of  a  mark,  in 
which  there  figures  the  name  or  firm  of  the  prior  owner,  may 
continue  using  it  as  registered,  the  requisite  is  indispensable 
to  have  the  assignment  entered,  on  petition  in  writing;  this  act 
will  be  verified  by  taking  due  note  in  the  Register  and  upon  the 
corresponding  certificate. 


258  DOMINICAN  EEPUBLIC 

4)  It  is  permitted  to  the  proprietor  of  a  mark  to  introduce 
therein  slight  modifications  of  detail  that  do  not  alter  the  ensem- 
ble of  the  same,  for  example,  the  addition  of  medals  and  awards 
obtained,  etc.,  provided  that  no  modification  will  be  permitted 
which  would  contribute  to  the  mark  thus  modified  being  confused 
with  another  registered. 

5)  It  shall  be  obligatory,  for  whoever  desires  to  effect  the 
modifications  of  which  the  preceding  clause  treats,  to  present, 
along  with  the  respective  application,  two  copies  of  the  modified 
mark. 

6)  The  modifications  to  which  the  preceding  clauses  refer 
carry  with  them  the  annulment  of  the  first  registration ;  it  being 
provided  that  marks  that  have  been  the  object  of  modification 
shall  not  be  considered  as  registered  save  for  the  unexpired 
term  of  the  first  registration. 

7)  There  may  not  be  altered  a  name  or  firm  registered  as 
part  of  a  mark,  without  the  alteration  being  registered  and 
published.    Alterations  of  this  order  that  are  made  without 
registration  shall  entail  avoidance  thereof. 

8)  In  addition  to  the  prohibitions  established  by  Art.  6 
of  the  trade  mark  law,  there  shall  be  prohibited  the  registration 
of  marks  that  contain:  letters,  words,  names,  or  distinctives 
that  the  State  uses  or  might  use ;  and  there  may  not  be  regis- 
tered as  trade  marks:  the  form  or  the  color  that  the  manufac- 
turer shall  have  given  to  his  product  or  to  the  receptacles  that 
contain  it ;  terms  or  locutions  that  are  in  general  use ;  designa- 
tions that  ordinarily  are  employed  for  distinguishing  the  nature 
of  the  products  or  the  class  to  which  they  pertain;  geographic 
names,  when  by  themselves  they  constitute  the  mark. 

9)  When  course  cannot  be  given  to  an  application  for  regis- 
tration of  a  mark  due  to  there  not  being  included  the  documents 
required  for  this  purpose,  priority  shall  be  established,  for  the 
ends  of  Art.  7  of  the  law  in  the  matter,  counting  from  the 
date  on  which  said  documents  are  regularly  presented. 

10)  Only  the  possessors  of  a  certificate  of  ownership  of  a 
mark  registered  by  the  Department  of  Industry  shall  have  the 
right  to  use  the  denomination  "Marca  Registrada"  or  the  equiv- 
alent initials  "M.  R."  on  the  mark  to  which  the  certificate  refers. 
Those  that,  without  such  requisite,  shall  use  said  denomination 
or  initials,  shall  be  subject  to  Arts.  11  and  13  of  the  trade 
mark  law. 

11)  In  consideration  of  the  fact  that  there  do  not  exist  the 
members  of  the  Council  of  Industry  of  which  the  final  para- 
graph of  article  6  of  the  law  in  the  matter  speaks,  the  examina- 
tion or  comparison  of  marks  presented  for  registration  that 


DOMINICAN  REPUBLIC  259 

imitate  totally  or  partially  other  marks  registered,  affixed  to 
products  of  the  same  class,  shall  be  subject  to  the  examination 
and  sole  decision  of  the  Secretary  of  Industry. 

12)  The  expenses  for  stamped  paper  and  those  for  the 
certificate  of  registration  shall  devolve  upon  the  party  in- 
terested. 

Given  at  Santo  Domingo,  capital  of  the  Dominican  Repub- 
lic, on  November  30,  1917. 

(Signed)    C.  C.  Baughman, 

Lieutenant,  U.  S.  Navy, 

For  the  Military  Government. 


DUTCH   INDIES 

The  trade  mark  law  of  the  Dutch  Indies  is  the  same  as  that 
of  Curasao,  which  see. 


EAST  AFRICA  PROTECTORATE 

TRADE  MARKS  ORDINANCE  NO.  17  OF  [OCTOBER 

16]  1912 

Short  Title  and  Commencement 

1.  This  Ordinance  may  be  cited  as  "The  Registration  of 
Trade  Marks  Ordinance,  1912,"  and  shall  come  into  operation, 
for  the  purpose  of  making  rules  and  prescribing  forms  and  fees, 
on  the  publication  of  the  Ordinance ;  and,  for  all  other  purposes, 
on  such  date  as  the  Governor,  by  notice  in  the  '  *  Gazette, ' '  shall 
determine. 

PART  I 

DEFINITIONS 

2.  In  and  for  the  purposes  of  this  Ordinance  (unless  the 
context  otherwise  requires) : — 

" Marks"  shall  include  a  device,  brand,  heading,  label, 
ticket,  name,  signature,  word,  letter,  numeral,  or  any  combina- 
tion thereof: 

" Trade  Mark"  shall  mean  a  mark  used  or  proposed  to  be 
used  upon  or  in  connection  with  goods  for  the  purpose  of  indi- 
cating that  they  are  the  goods  of  the  proprietor  of  such  trade 
mark  by  virtue  of  manufacture,  selection,  certification,  dealing 
with,  or  offering  for  sale : 

' ' Registrable  Trade  Mark"  shall  mean  a  trade  mark  which 
is  capable  of  registration  under  the  provisions  of  this 
Ordinance : 

" Register"  shall  mean  the  register  of  trade  marks  kept 
under  the  provisions  of  this  Ordinance : 

"Registered  Trade  Mark"  shall  mean  a  trade  mark  which 
is  actually  upon  the  register: 

"Prescribed"  shall  mean,  in  relation  to  proceedings  before 
the  Court,  prescribed  by  rules  of  Court;  and,  in  other  cases, 
prescribed  by  this  Ordinance  or  the  Rules  thereunder: 

"Court"  shall  mean  His  Majesty's  High  Court  for  East 
Africa : 

"Person"  includes  a  body  corporate: 

"Goods"  shall  mean  anything  which  is  the  subject  of  trade, 
manufacture,  or  merchandise. 

REGISTEB  OF  TRADE  MARKS 

3.  There  shall  be  kept  at  the  Office  of  the  Secretary  under 
the  Inventions  and  Designs  Act  1888  (Act  V  of  1888)  for  the 


262  EAST  AFRICA  PROTECTORATE 

purposes  of  this  Ordinance  a  book  called  the  Register  of  Trade 
Marks,  wherein  shall  be  entered  all  registered  trade  marks  with 
the  names  and  addresses  of  their  proprietors,  the  dates  on  which 
applications  were  made  for  their  registration,  as  hereinafter 
provided,  notifications  of  assignments  and  transmissions,  dis- 
claimers, conditions,  limitations,  and  such  other  matters  relat- 
ing to  such  trade  marks  as  may  from  time  to  time  be  prescribed. 
The  register  shall  be  kept  under  the  control  and  management 
of  the  aforesaid  Secretary,  who  is  in  this  Ordinance  referred 
to  as  the  Registrar. 

Trust  not  to  be  entered  in  register 

4.  There  shall  not  be  entered  in  the  register  any  notice 
of  any  trust  expressed,  implied,  or  constructive,  nor  shall  any 
such  notice  be  receivable  by  the  Registrar. 

Inspection  of  and  extract  from  register 

5.  The  register  kept  under  this  Ordinance  shall  at  all  con- 
venient times  be  open  to  the  inspection  of  the  public,  subject  to 
the  provisions  of  this  Ordinance  or  to  such  regulations  as  may 
be  prescribed;  and  certified  copies  of  any  entry  in  any  such 
register  shall  be  given  to  any  person  requiring  the  same  on  pay- 
ment of  the  prescribed  fee. 

REGISTEABLE  TRADE  MARKS 
Particularity 

6.  A  Trade  Mark  must  be  registered  in  respect  of  particu- 
lar goods  or  classes  of  goods. 

The  applicant  shall,  in  his  application,  state  goods  included 
in  one  class  only.  If  the  applicant  desires  to  register  the  same 
mark  for  goods  falling  in  more  than  one  class,  he  shall  make  a 
separate  application  in  respect  of  each  class  and  each  of  such 
applications  shall  be  treated  for  all  purposes  as  a  separate  and 
distinct  application  and  the  entries  on  the  register  in  pursuance 
of  such  applications  shall  for  all  purposes,  be  deemed  to  relate 
to  separate  and  distinct  trade  marks. 

Essentials 

7.  A  registrable  trade  mark  must  contain  or  consist  of  at 
least  one  of  the  following  essential  particulars : — 

(1)  The  name  of  a  company,  individual,  or  firm  represented 
in  a  special  or  particular  manner ; 

(2)  The  signature  of  the  applicant  for  registration  or  some 
predecessor  in  his  business ; 

(3)  An  invented  word  or  invented  words; 

(4)  A  word  or  words  having  no  direct  reference  to  the 
character  or  quality  of  the  goods,  and  not  being  according  to 
its  ordinary  signification  a  geographical  name  or  a  surname; 


EAST  AFRICA  PROTECTORATE  263 

(5)  Any  other  distinctive  mark,  but  a  name,  signature  or 
word  or  words,  other  than  such  as  fall  within  the  descriptions 
in  the  above  paragraphs  (1),  (2),  (3),  and  (4),  shall  not,  except 
by  order  of  the  Court,  be  deemed  a  distinctive  mark : 

For  the  purposes  of  this  Section  "distinctive"  shall  mean 
adapted  to  distinguish  the  goods  of  the  proprietor  of  the  trade 
mark  from  those  of  other  persons. 

In  determining  whether  a  trade  mark  is  so  adapted  the 
Court  may,  in  the  case  of  a  trade  mark  in  actual  use,  take  into 
consideration  the  extent  to  which  such  user  has  rendered  such 
trade  mark  in  fact  distinctive  for  the  goods  with  respect  to 
which  it  is  registered  or  proposed  to  be  registered. 

Provided  always  that  any  mark  which  has  been  registered 
as  a  distinctive  mark  in  the  United  Kingdom  under  the  Trade 
Marks  Act  1905,  shall  be  deemed  to  be  a  distinctive  mark  for  the 
purpose  of  this  Ordinance. 

Coloured  trade  marks 

8.  A  trade  mark  may  be  limited  in  whole  or  in  part  to  one 
or  more  specified  colours,  and  in  such  case  the  fact  that  it  is  so 
limited  shall  be  taken  into  consideration  by  any  Tribunal  having 
to  decide  on  the  distinctive  character  of  such  trade  mark.    If 
and  so  far  as  a  trade  mark  is  registered  without  limitation  of 
colour  it  shall  be  deemed  to  be  registered  for  all  colours. 

Restriction  on  registration 

9.  (1)  It  shall  not  be  lawful  to  register  as  a  trade  mark 
or  part  of  a  trade  mark  any  matter,  the  use  of  which  would 
by  reason  of  its  being  calculated  to  deceive  or  otherwise  be 
disentitled  to  protection  in  a  Court  of  Justice,  or  would  be  con- 
trary to  law  or  morality,  or  any  scandalous  design. 

(2)  No  trade  mark  shall  be  registered  for  any  goods  set 

forth  and  included  in  classes  23,  24,  and  25*  of  the  third  part  of 

the  Schedule  hereto  unless  such  trade  mark  has  been  and  is 

registered  in  the  United  Kingdom  in  respect  of  such  goods. 

REGISTRATION  OF  TRADE  MARKS 

Application  to  register 

10.  (1)  Any  person  claiming  to  be  the  proprietor  of  a 
trade  mark  may  by  himself  or  his  agent  apply  to  the  Registrar 
for  the  registration  thereof. 

(2)  The  application  must  be  made  in  the  prescribed  form, 
and  must  be  accompanied  by  not  less  than  three  representations 

*  Class  23  (a).  Cotton  yarn;  (b)  sewing  cotton; 
Class  24.  Cotton  piece  goods  of  all  kinds; 
Class  25.  Cotton  goods  not  included  in  Classes  23,  24,  or  38. 
Article  38  covers  "articles  of  clothing". 


264  EAST  AFRICA  PROTECTORATE 

of  the  trade  mark  and  by  a  stereotype  block  of  such  represen- 
tation. 

(3)  The   applicant   must   state   the   particular   goods   or 
classes  of  goods  in  connection  with  which  he  desires  his  trade 
mark  to  be  registered. 

(4)  The  application  must  be  left  with  or  sent  by  post  to 
the  Registrar. 

(5)  The  date  of  the  delivery  or  receipt  of  the  application 
shall  be  endorsed  thereon  and  recorded  in  the  Registrar's  Office. 

(6)  When  an  applicant  for  the  registration  of  a  trade  mark 
or  an  agent  does  not  reside  or  carry  on  business  in  the  Pro- 
tectorate he  shall  give  the  Registrar  an  address  for  service  in 
the  Protectorate  and  if  he  fails  to  do  so  the  Registrar  may  re- 
fuse to  proceed  with  the  application  until  the  address  has  been 
given. 

Action  in  regard  to  application 

11.  (1)  Subject  to  the  provisions  of  this  Ordinance  the 
Registrar  may  refuse  such  application  as  aforesaid,  or  may 
accept  it  absolutely  or  subject  to  conditions,  amendments  or 
modifications. 

(2)  In  case  of  any  such  refusal  or  conditional  acceptance 
the  Registrar  shall,  if  required  by  the  applicant,  state  in  writing 
the  grounds  of  his  decision  and  the  materials  used  by  him  in 
arriving  at  the  same,  and  such  decision  shall  be  subject  to  appeal 
to  the  Court. 

(3)  An  appeal  under  this  section  shall  be  made  in  the  pre- 
scribed manner,  and  on  such  appeal  the  Court  shall,  if  required, 
hear  the  applicant  and  the  Registrar,  and  shall  make  an  order 
determining  whether,  and  subject  to  what  conditions,  amend- 
ments, or  modifications,  if  any,  the  application  is  to  be  accepted. 

Advertisement  of  application 

12.  When  an  application  for  registration  of  a  trade  mark 
has  been  accepted,  whether  absolutely  or  subject  to  conditions, 
the  Registrar  shall,  as  soon  as  may  be  after  such  acceptance, 
cause   the   application  as   accepted  to  be   advertised   in   the 
"Official  Gazette."    Such  advertisement  shall  set  forth  all  con- 
ditions subject  to  which  the  application  has  been  accepted. 

Opposition  of  registration 

13.  (1)  Any  person  may,  within  three  months,  or  such 
further  time,  not  exceeding  nine  months  in  all  as  the  Registrar 
shall  allow  from  the  date  of  the  advertisement  of  an  application 
for  the  registration  of  a  trade  mark,  give  notice  to  the  Registrar 
of  opposition  to  such  registration. 


EAST  AFRICA  PROTECTORATE  265 

Notice 

(2)  Such  notice  shall  be  given  in  writing  in  the  prescribed 
manner,   and   shall   include   a   statement   of   the   grounds   of 
opposition. 

Counter-statement 

(3)  The  Registrar  shall  send  a  copy  of  such  notice  to  the 
applicant,  and  within  one  month  after  the  receipt  of  such  notice, 
or  such  further  time,  not  exceeding  three  months  in  all,  as  the 
Registrar  may  allow,  the  applicant  shall  send  to  the  Registrar, 
in  the  prescribed  manner,  a  counter-statement  of  the  grounds 
on  which  he  relies  for  his  application,  and,  if  he  does  not  do  so, 
he  shall  be  deemed  to  have  abandoned  his  application. 

Copy  of  counter-statement  to  party  opposing 

(4)  If  the  applicant  send  such  counter-statement,  the  Reg- 
istrar shall  furnish  a  copy  thereof  to  any  person  giving  notice 
of  opposition,  and  shall  require  him  to  give  security  in  such 
manner  and  to  such  amount  as  the  Registrar  may  require  for 
such  costs  as  may  be  awarded  in  respect  of  such  opposition, 
and  if  such  security  is  not  givin  within  fourteen  days  after  such 
requirement  was  made  or  such  further  time  as  the  Registrar 
may  allow,  the  opposition  shall  be  deemed  to  be  withdrawn. 

(5)  If  the  person  who  gave  notice  of  opposition  duly  gives 
such  security  as  aforesaid,  the  Registrar  shall  inform  the  appli- 
cant thereof  in  writing,  and  thereafter  the  case  shall  be  deemed 
to  stand  for  the  determination  of  the  Court. 

(6)  Where  the  opponent  is  out  of  the  Protectorate  he  shall, 
with  notice  of  opposition  to  registration,  give  the  Registrar  an 
address  for  service  in  the  Protectorate. 

Cases  how  brought  before  the  Court 

14.  (1)  When  a  case  stands  for  the  determination  of  the 
Court  under  the  provisions  of  the  last  preceding  Section,  the 
Registrar  shall  require  the  applicant  to  make  a  written  appli- 
cation to  the  Court  for  an  order  that,  notwithstanding  the  oppo- 
sition of  which  notice  has  been  given,  the  registration  of  the 
trade  mark  be  proceeded  with  by  the  Registrar,  or  to  take  such 
other  proceedings  as  may  be  proper  and  necessary  for  the  deter- 
mination of  the  case  by  the  Court. 

(2)  The  applicant  shall  thereupon  make  his  application  or 
take  such  other  proceedings  as  aforesaid,  within  the  period  of 
one  month  or  such  further  time  as  the  Registrar  may  allow, 
and  shall  also  within  the  like  period  give  notice  thereof  to  the 
Registrar. 

(3)  If  the  applicant  shall  fail  to  make  such  application  or 
to  take  such  other  proceedings  of  which  failure  the  non-receipt 


266  EAST  AFRICA  PROTECTORATE 

by  the  Registrar  of  the  said  notice  shall  be  sufficient  proof,  the 

applicant  shall  be  deemed  to  have  abandoned  his  application. 

Powers  of  the  Court 

15.  (1)  The  Court  shall  have  power  in  proceedings  under 
the  last  two  preceding  Sections  to  award  to  any  party  such 
costs  as  it  may  consider  reasonable  and  to  direct  how  and  by 
what  parties  they  are  to  be  paid. 

(2)  The  Court  shall,  if  required,  hear  the  parties  and  the 
Registrar,  and  shall  make  an  order  determining  whether,  and 
subject  to  what  conditions,  if  any,  registration  is  to  be  permitted. 

(3)  The  Court  may  permit  the  trade  mark  proposed  to  be 
registered  to  be  modified  in  any  manner  not  substantially  affect- 
ing the  identity  of  such  trade  mark,  but  in  such  case  the  trade 
mark  as  so  modified  shall  be  advertised  in  the  " Official  Gazette" 
before  being  registered. 

Disclaimers 

16.  If  a  trade  mark  contains  parts  not  separately  regis- 
tered by  the  proprietor  as  trade  marks,  or  if  it  contains  matter 
common  to  the  trade  or  otherwise  of  a  non-distinctive  character, 
the  Registrar  or  the  Court,  in  deciding  whether  such  trade  mark 
shall  be  entered  or  shall  remain  upon  the  register,  may  require, 
as  a  condition  of  its  being  upon  the  register,  that  the  proprietor 
shall  disclaim  any  right  to  the  exclusive  use  of  any  part  or  parts 
of  such  trade  mark,  or  of  all  or  any  portion  of  such  matter,  to 
the  exclusive  use  of  which  they  hold  him  not  to  be  entitled,  or 
that  he  shall  make  such  other  disclaimer  as  they  may  consider 
needful  for  the  purpose  of  defining  his  rights  under  such  regis- 
tration: Provided  always  that  no  disclaimer  upon  the  register 
shall  affect  any  rights  of  the  proprietor  of  a  trade  mark  except 
such  as  arise  out  of  the  registration  of  the  trade  mark  in  respect 
of  which  the  disclaimer  is  made. 

Date  of  registration 

17.  When  an  application  for  registration  of  a  trade  mark 
has  been  accepted  and  has  not  been  opposed,  and  the  time  for 
notice  of  opposition  has  expired,  or  having  been  opposed,  the 
opposition  has  been  decided  in  favour  of  the  applicant,  the 
Registrar  shall,  unless  the  Court  otherwise  direct,  register  the 
said  trade  mark,  and  the  trade  mark,  when  registered,  shall  be 
registered  as  of  the  date  of  the  application  for  registration,  and 
such  date  shall  be  deemed  for  the  purposes  of  this  ordinance  to 
be  the  date  of  registration. 

Certificate  of  registration 

18.  The  Registrar  shall  have  a  seal  and  on  the  registration 
of  a  trade  mark  he  shall  issue  to  the  applicant  a  certificate  in 


EAST  AFRICA  PROTECTORATE  267 

the  prescribed  form  of  the  registration  of  such  trade  mark 
under  the  hand  and  seal  of  the  Registrar. 

Non-completion  of  registration 

19.  Where  registration  of  a  trade  mark  is  not  completed 
within  twelve  months  from  the  date  of  the  application  by  reason 
of  default  on  the  part  of  the  applicant,  the  Registrar  may,  after 
giving  notice  in  writing  of  the  non-completion  to  the  applicant 
or  to  his  agent  (if  any),  treat  the  application  as  abandoned 
unless  it  is  completed  within  the  time  specified  in  that  behalf  in 
such  notice. 

IDENTICAL  TRADE  MARKS 

20.  Except  by  order  of  the  Court  or  in  the  case  of  trade 
marks  in  use  before  the  coming  into  operation  of  this  Ordinance, 
no  trade  mark  shall  be  registered  in  respect  of  any  goods  or 
description  of  goods  which  is  identical  with  one  belonging  to  a 
different  proprietor  which  is  already  on  the  register  with  respect 
to  such  goods  or  description  of  goods,  or  so  nearly  resembling 
such  a  trade  mark  as  to  be  calculated  to  deceive. 

Rival  claims  to  identical  marks 

21.  Where  each  of  several  persons  claims  to  be  proprietor 
of  the  same  trade  mark  or  of  nearly  identical  trade  marks,  in 
respect  of  the  same  goods  or  description  of  goods,  and  to  be 
registered  as  such  proprietor,  the  Registrar  may  refuse  to  reg- 
ister any  of  them  until  their  rights  have  been  determined  by  the 
Court,  or  have  been  settled  by  agreement  in  a  manner  approved 
by  him. 

Concurrent  user 

22.  In  case  of  honest  concurrent  user  or  of  other  special 
circumstances  which,  in  the  opinion  of  the  Court,  make  it  proper 
to  do  so,  the  Court  may  permit  the  registration  of  the  same 
trade  mark,  or  of  nearly  identical  trade  marks,  for  the  same 
goods  or  description  of  goods  by  more  than  one  proprietor  sub- 
ject to  such  conditions  and  limitations,  if  any,  as  to  mode  or 
place  of  user  or  otherwise  as  it  may  think  it  right  to  impose. 

ASSIGNMENT 
Assignment  and  transmission  of  trade  marks 

23.  A  trade  mark  when  registered  shall  be  assigned  and 
transmitted  only  in  connection  with  the  goodwill  of  the  business 
concerned  in  the  goods  for  which  it  has  been  registered  and  shall 
be  determinable  with  that  goodwill. 

Apportionment  of  marks  on  dissolution  of  partnership 

24.  In  any  case  where  from  any  cause,  whether  by  reason 
of  dissolution  of  partnership  or  otherwise,  a  person  ceases  to 
carry  on  business,  and  the  goodwill  of  such  person  does  not  pass 


268  EAST  AFRICA  PROTECTORATE 

to  one  successor  but  is  divided,  the  Registrar  may  (subject  to 
the  provisions  of  this  Ordinance  as  to  associated  trade  marks,) 
on  the  application  of  the  parties  interested,  permit  an  appor- 
tionment of  the  registered  trade  marks  of  the  person  among  the 
persons  in  fact  continuing  the  business,  subject  to  such  condi- 
tions and  modifications,  if  any,  as  he  may  think  necessary  in  the 
public  interest.  Any  decision  of  the  Registrar  under  this  Sec- 
tion shall  be  subject  to  appeal  to  the  Court. 

ASSOCIATED  TRADE  MARKS 

25.  If  application  be  made  for  the  registration  of  a  trade 
mark  so  closely  resembling  a  trade  mark  of  the  applicant  already 
on  the  register  for  the  same  goods  or  description  of  goods  as  to 
be  calculated  to  deceive  or  cause  confusion  if  used  by  a  person 
other  than  the  applicant,  the  tribunal  hearing  the  application 
may  require  as  a  condition  of  registration  that  such  trade  marks 
shall  be  entered  on  the  register  as  associated  trade  marks. 

Combined  trade  marks 

26.  If  the  proprietor  of  a  trade  mark  claims  to  be  entitled 
to  the  exclusive  use  of  any  portion  of  such  trade  mark  sepa- 
rately he  may  apply  to  register  the  same  as  separate  trade 
marks.    Each  such  separate  trade  mark  must  satisfy  all  the 
conditions  and  shall  have  all  the  incidents  of  an  independent 
trade  mark,  except  that  when  registered  it  and  the  trade  mark 
of  which  it  forms  a  part  shall  be  deemed  to  be  associated  trade 
marks  and  shall  be  entered  on  the  register  as  such,  but  the  user 
of  the  whole  trade  mark  shall  for  the  purposes  of  this  Ordinance 
be  deemed  to  be  also  a  user  of  such  registered  trade  marks 
belonging  to  the  same  proprietor  as  it  contains. 

Series  of  trade  marks 

27.  When  a  person  claiming  to  be  the  proprietor  of  several 
trade  marks  for  the  same  description  of  goods  which,  while 
resembling  each  other  in  the  material  particulars  thereof,  yet 
differ  in  respect  of: — 

(a)  Statements  of  the  goods  for  which  they  are  respectively 
used  or  proposed  to  be  used ;  or 

(b)  Statements  of  number,  price,  quality,  or  names  of 
places;  or 

(c)  Other  matter  of  a  non-distinctive  character  which  does 
not  substantially  affect  the  identity  of  the  trade  mark;  or 

(d)  Colour; 

seeks  to  register  such  trade  marks,  they  may  be  registered  as  a 
series  in  one  registration.  All  the  trade  marks  in  a  series  of 
trade  marks  so  registered  shall  be  deemed  to  be,  and  shall  be 
registered  as,  associated  trade  marks. 


EAST  AFRICA  PROTECTORATE  269 

Assignment  and  user  of  associated  trade  marks 

28.  Associated  trade  marks  shall  be  assignable  or  trans- 
missible only  as  a  whole  and  not  separately,  but  they  shall  for 
all  other  purposes  be  deemed  to  have  been  registered  as  sepa- 
rate trade  marks.    Provided  that  where  under  the  provisions  of 
this  Ordinance  user  of  a  registered  trade  mark  is  required  to  be 
proved  for  any  purpose,  the  tribunal  may,  if  and  so  far  as  it 
shall  think  right,  accept  user  of  an  associated  registered  trade 
mark,  or  of  the  trade  mark  with  additions  or  alterations  not 
substantially  affecting  its  identity  as  an  equivalent  for  such 
user. 

DURATION  AND  RENEWAL  OP  REGISTRATION 
Duration  of  registration 

29.  The  registration  of  a  trade  mark  shall  be  for  a  period 
of  fourteen  years,  but  may  be  renewed  from  time  to  time  in 
accordance  with  the  provisions  of  this  Ordinance. 

Renewal  of  registration 

30.  The  Registrar  shall,  on  application  made  by  the  regis- 
tered proprietor  of  a  trade  mark  in  the  prescribed  manner  and 
within  the  prescribed  period,  renew  the  registration  of  such 
trade  mark  for  a  period  of  fourteen  years  from  the  expiration 
of  the  original  registration  or  of  the  last  renewal  of  registration, 
as  the  case  may  be,  which  date  is  herein  termed, ' '  the  expiration 
of  the  last  registration." 

Procedure  on  expiry  of  period  of  registration 

31.  At  the  prescribed  time  before  the  expiration  of  the  last 
registration  of  a  trade  mark,  the  Registrar  shall  send  notice  in 
the  prescribed  manner  to  the  registered  proprietor  at  his  regis- 
tered address  of  the  date  at  which  the  existing  registration  will 
expire  and  the  conditions  as  to  payment  of  fees  and  otherwise 
upon  which  a  renewal  of  such  registration  may  be  obtained,  and 
if  at  the  expiration  of  the  time  prescribed  in  that  behalf  such 
conditions  have  not  been  duly  complied  with,  the  Registrar  may 
remove  such  trade  mark  from  the  register,  subject  to  such  con- 
ditions (if  any)  as  to  its  restoration  to  the  register  as  may  be 
prescribed. 

Status  of  unrenewed  trade  mark 

32.  Where  a  Trade  Mark  has  been  removed  from  the  reg- 
ister for  non-payment  of  the  fee  for  renewal,  such  trade  mark 
shall,  nevertheless,  for  the  purpose  of  any  application  for  regis- 
tration during  one  year  next  after  the  date  of  such  removal,  be 
deemed  to  be  a  trade  mark  which  is  already  registered,  unless 
it  is  shown  to  the  satisfaction  of  the  Registrar  that  there  had 
been  no  bond  fide  trade  user  of  such  trade  mark  during  the  two 
years  immediately  preceding  such  removal. 


270  EAST  AFRICA  PROTECTORATE 


Registrar  may  correct  formal  errors  in  application 

33.  The  Registrar  may,  on  request  in  writing  accompanied 
by  the  prescribed  fee, 

(a)  correct  any  clerical  error  in  or  in  connection  with  an 
application  for  the  registration  of  a  trade  mark,  or 

(b)  permit  an  applicant  for  registration  of  a  trade  mark 
to  amend  his  application  upon  such  terms  as  he  may  think  fit. 

Correction  of  register 

34.  The  Registrar  may,  on  request  made  in  the  prescribed 
manner  by  the  registered  proprietor  or  by  some  person  entitled 
by  law  to  act  in  his  name : — 

(1)  Correct  any  error  in  the  name  or  address  of  the  regis- 
tered proprietor  of  a  trade  mark;  or 

(2)  Enter  any  change  in  the  name  or  address  of  the  person 
who  is  registered  as  proprietor  of  a  trade  mark;  or 

(3)  Cancel  the  entry  of  a  trade  mark  on  the  register;  or 

(4)  Strike  out  any  goods  or  descriptions  of  goods  from 
those  for  which  a  trade  mark  is  registered ;  or 

(5)  Enter  a  disclaimer  or  memorandum  relating  to  a  trade 
mark  which  does  not  in  any  way  extend  the  rights  given  by  the 
existing  registration  of  such  trade  mark. 

Any  decision  of  the  Registrar  under  this  Section  shall  be 
subject  to  appeal  to  the  Court. 

Registration  of  assignments,  &c. 

35.  Subject  to  the  provisions  of  this  Ordinance  where  a 
person  becomes  entitled  to  a  registered  trade  mark  by  assign- 
ment, transmission,  or  other  operation  of  law,  the  registrar 
shall,  on  request  made  in  the  prescribed  manner,  and  on  proof 
of  title  to  his  satisfaction,  cause  the  name  and  address  of  such 
person  to  be  entered  on  the  register  as  proprietor  of  the  trade 
mark.    Any  decision  of  the  Registrar  under  this  Section  shall 
be  subject  to  appeal  to  the  Court. 

Alteration  of  registered  trade  mark 

36.  (1)  The  registered  proprietor  of  any  trade  mark  may 
apply  in  the  prescribed  manner  to  the  Registrar  for  leave  to 
add  to  or  alter  such  trade  mark  in  any  manner  not  substantially 
affecting  the  identity  of  the  same,  and  the  Registrar  may  refuse 
such  leave  or  may  grant  the  same  on  such  terms  as  he  may 
think  fit;  but  any  such  refusal  or  conditional  permission  shall 
be  subject  to  appeal  to  the  Court. 

(2)  If  leave  be  granted,  the  trade  mark  as  altered  shall  be 
advertised  in  the  prescribed  manner,  and  the  Registrar  shall  on 


EAST  AFRICA  PROTECTORATE  271 

payment  of  the  prescribed  fee,  cause  the  registrar  to  be  altered 
in  conformity  with  the  order  of  leave. 

Rectification  of  register  by  the  Court 

37.  (1)  The  Court  may,  on  the  application  of  any  person 
aggrieved  by  the  omission  without  sufficient  cause  of  the  name 
of  any  person  or  of  any  other  particulars  from  the  register  kept 
under  this  Ordinance  or  by  any  entry  made  without  sufficient 
cause  in  the  register,  or  by  any  entry  wrongfully  remaining  on 
the  register,  or  by  any  error  or  defect  in  any  entry  in  the  reg- 
ister make  such  order  for  making,  expunging,  or  varying  the 
entry  as  the  Court  thinks  fit,  or  the  Court  may  refuse  the  appli- 
cation, and  in  either  case  may  make  such  order  with  respect  to 
the  costs  of  the  proceedings  as  the  Court  thinks  fit. 

(2)  The  Court  may  in  any  proceedings  under  this  section 
decide  any  question  that  it  may  be  necessary  or  expedient  to 
decide  for  the  rectification  of  a  register,  and  may  direct  an  issue 
to  be  tried  for  the  decision  of  any  question  of  fact,  and  may 
award  damages  to  the  party  aggrieved. 

(3)  Notice  of  any  intended  application  to  the  Court  under 
this  section  shall  be  given  to  the  Registrar  by  the  applicant,  and 
the  Registrar  shall  be  entitled  to  be  heard  on  the  application. 

(4)  In  case  of  fraud  in  the  registration  or  transmission  of 
a  registered  trade  mark,  the  Registrar  may  himself  apply  to  the 
Court  under  the  provisions  of  this  section. 

(5)  If  any  order  of  the  Court  rectifying  the  register  is 
made  the  Registrar  shall  on  proof  thereof  and  on  payment  of 
the  prescribed  fee  cause  the  register  to  be  altered  in  conformity 
with  such  order. 

Non-user  of  trade  mark 

38.  A  registered  trade  mark  may,  on  the  application  to  the 
Court  of  any  person  aggrieved,  be  taken  off  the  register  in 
respect  of  any  of  the  goods  for  which  it  is  registered,  on  the 
ground  that  it  was  registered  by  the  proprietor  or  a  predecessor 
in  title  without  any  bond  fide  intention  to  use  the  same  in  con- 
nection with  such  goods,  and  there  has  in  fact  been  no  bond  fide 
user  of  the  same  in  connection  therewith,  or  on  the  ground  that 
there  has  been  no  bond  fide  user  of  such  trade  mark  in  connec- 
tion with  such  goods  during  the  five  years  immediately  preced- 
ing the  application,  unless  in  either  case  such  non-user  is  shown 
to  be  due  to  special  circumstances  in  the  trade,  and  not  to  any 
intention  not  to  use  or  to  abandon  such  trade  mark  in  respect 
of  such  goods. 

EFFECT  OF  REGISTRATION 
Powers  of  registered  proprietor 

39.  Subject  to  the  provisions  of  this  Ordinance: 


272  EAST  AFRICA  PROTECTORATE 

(1)  The  person  for  the  time  being  entered  in  the  register 
as  proprietor  of  the  trade  mark  shall,  subject  to  any  rights 
appearing  from  such  register  to  be  vested  in  any  other  person, 
have  power  to  assign  the  same,  and  to  give  effectual  receipts  for 
any  consideration  for  such  assignment : 

(2)  Any   equities   in  respect   of  a   trade  mark  may  be 
enforced  in  like  manner  as  in  respect  of  any  other  personal 
property. 

Rights  of  proprietor  of  trade  mark 

40.  Subject  to  the  provisions  of  section  42  of  this  Ordi- 
nance and  to  any  limitations  and  conditions  entered  upon  the 
register,  the  registration  of  a  person  as  proprietor  of  a  trade 
mark  shall,  if  valid,  give  to  such  person  the  exclusive  right  to 
the  use  of  such  trade  mark  upon  or  in  connection  with  the  goods 
in  respect  of  which  it  is  registered : 

More  than  one  proprietor 

Provided  always  that  where  two  or  more  persons  are  reg- 
istered proprietors  of  the  same  (or  substantially  the  same)  trade 
mark  in  respect  of  the  same  goods  no  rights  of  exclusive  user 
of  such  trade  mark  shall  (except  so  far  as  their  respective  rights 
shall  have  been  denned  by  the  Court)  be  acquired  by  any  one  of 
such  persons  as  against  any  other  by  the  registration  thereof, 
but  each  of  such  persons  shall  otherwise  have  the  same  rights 
as  if  he  were  the  sole  registered  proprietor  thereof. 

Registration  prima  facie  evidence  of  validity 

41.  In  all  legal  proceedings  relating  to  a  registered  trade 
mark  (including  applications  under  section  37  of  this  Ordi- 
nance) the  fact  that  a  person  is  registered  as  proprietor  of  such 
trade  mark  shall  be  prima  facie  evidence  of  the  validity  of  the 
original  registration  of  such  trade  mark  and  of  all  subsequent 
assignments  and  transmissions  of  the  same. 

Registration  conclusive  after  7  years 

42.  In  all  legal  proceedings  relating  to  a  registered  trade 
mark   (including  applications  under  section  37  of  this  Ordi- 
nance) the  original  registration  of  such  trade  mark  shall  after 
the  expiration  of  seven  years  from  the  date  of  such  original 
registration  (or  seven  years  from  the  passing  of  this  Ordinance, 
whichever  shall  last  happen)  be  taken  to  be  valid  in  all  respects 
unless  such  original  registration  was  obtained  by  fraud,  or 
unless  the  trade  mark  offends  against  the  provisions  of  section 
9  of  this  Ordinance. 

Provided  that  nothing  in  this  Ordinance  shall  entitle  the 
proprietor  of  a  registered  trade  mark  to  interfere  with  or 
restrain  the  user  by  any  person  of  a  similar  trade  mark  upon 


EAST  AFRICA  PROTECTORATE  273 

or  in  connection  with  goods  upon  or  in  connection  with  which 
such  person  has,  by  himself  or  his  predecessors  in  business, 
continuously  used  such  trade  mark  from  a  date  anterior  to  the 
user  of  the  first  mentioned  trade  mark  by  the  proprietor  thereof 
or  his  predecessors  in  business,  or  to  object  (on  such  user  being 
proved)  to  such  person  being  put  upon  the  register  for  such 
similar  trade  mark  in  respect  of  such  goods  under  the  provisions 
of  section  22  of  this  Ordinance. 

Unregistered  trade  mark 

No  person  shall  be  entitled  to  institute  any  proceeding  to 
prevent  or  to  recover  damages  for  the  infringement  of  an  unreg- 
istered trade  mark  unless  such  trade  mark  was  in  use  before 
the  coming  into  operation  of  this  Ordinance,  and  has  been 
refused  registration  under  this  Ordinance.  The  Registrar  may, 
on  request,  grant  a  certificate  that  such  registration  has  been 
refused. 

Infringement 

44.  In  an  action  for  the  infringement  of  a  trade  mark  the 
Court  trying  the  question  of  infringement  shall  admit  evidence 
of  the  usages  of  the  trade,  in  respect  to  the  get-up  of  the  goods 
for  which  the  trade  mark  is  registered,  and  of  any  trade  marks 
or  get-up  legitimately  used  in  connection  with  such  goods  by 
other  persons. 

User  of  name,  address  or  description  of  goods 

45.  No  registration  under  this  Ordinance  shall  interfere 
with  any  bond  fide  use  by  a  person  of  his  own  name  or  place  of 
business  or  that  of  any  of  his  predecessors  in  business,  or  the 
use  by  any  person  of  any  bond  fide  description  of  the  character 
or  quality  of  his  goods. 

''Passing  off"  action 

46.  Nothing  in  this  Ordinance  contained  shall  be  deemed 
to  affect  rights  of  action  against  any  person  for  passing  off 
goods  as  those  of  another  person  or  the  remedies  in  respect 
thereof. 

LEGAL  PROCEEDINGS 
Certificate  of  validity 

47.  In  any  legal  proceedings  in  which  the  validity  of  the 
registration  of  a  registered  trade  mark  comes  into  question  and 
is  decided  in  favour  of  the  proprietor  of  such  trade  mark,  the 
Court  may  certify  the  same,  and  if  it  so  certifies  then  in  any 
subsequent  legal  proceeding  in  which  such  validity  comes  into 
question  the  proprietor  of  the  said  trade  mark  on  obtaining  a 
final  order  or  judgment  in  his  favour  shall  have  his  full  costs, 
charges,  and  expenses  as  between  solicitor  and  client,  unless  in 


274  EAST  AFRICA  PROTECTORATE 

such  "subsequent  proceeding  the  Court  certifies  that  he  ought 
not  to  have  the  same. 

Procedure  before  the  Court 

48.  Every  application  made  to  the  Court  under  Section  36 
or  37  and  all  proceedings  thereunder  shall  be  conducted  in  such 
manner  as  the  Court  may  direct. 

COSTS 

49.  In  all  proceedings  before  the  Court  under  this  Ordi- 
nance the  costs  of  the  Registrar  shall  be  in  the  discretion  of  the 
Court,  but  the  Registrar  shall  not  be  ordered  to  pay  the  costs  of 
any  other  of  the  parties. 

EVIDENCE 

Certified  copies  to  be  evidence 

50.  Printed  or  written  copies  or  extracts  purporting  to  be 
certified  by  the  Registrar,  of  or  from  any  document,  register, 
and  other  books  filed  or  kept  under  this  Ordinance,  in  his  office 
shall  be  admitted  in  evidence  in  all  Courts  in  the  Protectorate, 
and  in  all  proceedings,  without  further  proof  of  production  of 
the  originals. 

Certificate  of  Registrar  to  be  evidence 

51.  A  certificate  purporting  to  be  under  the  hand  of  the 
Registrar  as  to  any  entry,  matter,  or  thing  which  he  is  author- 
ised by  this  Ordinance,  or  any  rules  made  thereunder,  to  make 
or  do,  shall  be  prima  facie  evidence  of  the  entry  having  been 
made,  and  of  the  contents  thereof,  and  of  the  matter  or  thing 
having  been  done  or  not  done. 

Application  may  be  sent  by  post 

52.  (1)  An  application,  notice  or  other  document  authorised 
or  required  to  be  left  with,  made  or  given  to  the  Registrar  or  to 
any  other  person  under  this  Ordinance,  may  be  sent  by  a  regis- 
tered letter  through  the  post,  and  if  so  sent  shall  be  deemed  to 
have  been  so  left,  made,  or  given  respectively  at  the  time  when 
the  letter  containing  the  same  would  be  delivered  in  the  ordinary 
course  of  post. 

(2)  In  proving  such  service  or  sending  it  shall  be  sufficient 
to  prove  that  the  letter  was  properly  addressed  and  registered 
at  the  Post  Office. 

DUTIES  OP  REGISTRAR  OF  TRADE  MARKS 
Exercise  of  discretionary  powers  of  Registrar 

53.  Where  any  discretionary  or  other  power  is  given  to 
the  Registrar  by  this  Ordinance  or  rules  made  thereunder  he 
shall  not  exercise  that  power  adversely  to  the  applicant  for  reg- 
istration or  the  registered  proprietor  of  the  Trade  Mark  in 
question  without  (if  duly  required  so  to  do  within  the  prescribed 


EAST  AFRICA  PROTECTORATE  275 

time)  giving  such  applicant  or  registered  proprietor  an  oppor- 
tunity of  being  heard. 

PART  II 

POWER  TO  MAKE  RULES  AS  TO  FEES,  &c. 
Power  to  make  rules 

54.  (1)  The  Governor  in  Council  may  from  time  to  time 
make,  alter,  or  revoke  rules,  prescribe  such  forms,  and  generally 
to  do  such  things  as  he  thinks  expedient  subject  to  the  provisions 
of  this  Ordinance : — 

(a)  for  regulating  the  practice  of  registration  under  this 
Ordinance ; 

(b)  for  classifying  goods  for  the  purposes  of  registration 
of  trade  marks ; 

(c)  for  prescribing  the  fees  payable  in  respect  of  applica- 
tions and  registrations  and  other  matters  under  the  Ordinance, 
and  the  mode  of  payment  of  the  same ; 

(d)  generally  for  regulating  all  the  things  by  the  said  Ordi- 
nance placed  under  the  direction  or  control  of  the  Registrar ; 

(e)  for  altering  or  revoking  the  provisions  contained  in  the 
Schedules  hereto. 

(2)  Any  rules  made  in  pursuance  of  this  section  shall  be 
published  in  the  " Gazette"  and  shall  come  into  operation  on 
the  publication  thereof,  subject  to  disallowance  by  His  Majesty. 

(3)  Unless  and  until  they  be  altered  or  revoked  under  this 
section  the  provisions  contained  in  the  schedule  hereto  shall  be 
and  remain  in  force. 

SPECIAL  TRADE  MARK 
Standardisation,  etc.,  of  trade  mark 

55.  Where  any  association  or  person  undertakes  the  exam- 
ination of  any  goods  in  respect  of  origin,  material,  mode  of 
manufacture,  quality,  accuracy,  or  other  characteristic,  and  cer- 
tifies the  result  of  such  examination  by  mark  used  upon  or  in 
connection  with  such  goods,  the  Governor  may,  if  he  judge  it  to 
be  to  the  public  advantage,  direct  the  Registrar  to  permit  such 
association  or  person  to  register  such  mark  as  a  trade  mark  in 
respect  of  such  goods,  whether  or  not  such  association  or  person 
be  a  trading  association  or  trader  or  possessed  of  a  goodwill  in 
connection  with  such  examination  and  certifying.     When  so 
registered  such  trade  mark  shall  be  deemed  in  all  respects  to  be 
a  registered  trade  mark,  and  such  association  or  person  to  be 
proprietor  thereof,  save  that  such  trade  mark  shall  be  trans- 
missible or  assignable  only  by  permission  of  the  Governor. 


276  EAST  AFRICA  PROTECTORATE 

TRADE  MARKS  REGISTERED  IN  GREAT  BRITAIN 

56.  (1)  Any  person  who  has  registered  a  trade  mark  in 
the  United  Kingdom  shall  be  entitled  to  registration  of  his  trade 
mark  under  this  Ordinance  in  priority  to  other  applicants,  and 
such  registration  shall  have  the  same  date  as  the  application 
for  registration  in  the  United  Kingdom ;  provided  that  his  appli- 
cation is  made  within  four  months  from  his  applying  for  pro- 
tection in  the  United  Kingdom. 

Provided  that  nothing  in  this  section  contained  shall  entitle 
the  proprietor  of  the  trade  mark  to  recover  damages  for  in- 
fringements happening  prior  to  the  date  of  actual  registration 
of  his  trade  mark  in  the  Protectorate. 

(2)  The  use  in  the  Protectorate  during  the  period  afore- 
said of  the  trade  mark  shall  not  invalidate  the  registration  of 
his  trade  mark. 

(3)  The  application  for  the  registration  of  a  trade  mark 
under  this  Section  must  be  made  in  the  same  manner  as  an 
ordinary  application  under  this  Ordinance.    Provided  that  any 
trade  mark  the  registration  of  which  has  been  only  obtained  in 
the  United  Kingdom  may  be  registered  under  this  Ordinance. 

OFFENCES 

57.  (1)  If  any  person  makes  or  causes  to  be  made  a  false 
entry  in  the  register  kept  under  this  Ordinance,  or  a  writing 
falsely  purporting  to  be  a  copy  of  an  entry  in  such  register,  or 
produces,  or  tenders,  or  causes  to  be  produced  or  tendered  in 
evidence  any  such  writing  knowing  the  entry  or  writing  to  be 
false,  he  shall  be  guilty  of  an  offence  and  on  conviction  shall 
be  liable  to  imprisonment  of  either  description  for  a  term  not 
exceeding  five  years. 

(2)  Any  person  who  represents  any  trade  mark  as  regis- 
tered, which  is  not  so,  shall  be  guilty  of  an  offence,  and  liable  on 
conviction  to  a  fine  not  exceeding  seventy-five  rupees. 

A  person  shall  be  deemed,  for  the  purposes  of  this  section, 
to  represent  that  a  trade  mark  is  registered  if  he  uses  in  con- 
nection with  the  trade  mark  the  word  " registered"  or  any  word 
or  words  expressing  or  implying  that  registration  has  been 
obtained  for  the  trade  mark. 

(3)  If  any  person,  without  the  authority  of  His  Majesty, 
uses  in  connection  with  any  trade,  business,  calling,  or  profes- 
sion, the  Royal  Arms  (or  arms  so  closely  resembling  the  same 
as  to  be  calculated  to  deceive)  in  such  manner  as  to  be  calculated 
to  lead  to  the  belief  that  he  is  duly  authorised  so  to  use  the 
Royal  Arms,  or  if  any  person  without  the  authority  of  His 
Majesty  or  of  a  member  of  the  Royal  Family  uses  in  connection 
with  any  trade,  business,  calling,  or  profession  any  device,  em- 


EAST  AFEICA  PROTECTORATE  277 

blem  or  title  in  such  manner  as  to  be  calculated  to  lead  to  the 
belief  that  he  is  employed  by  or  supplies  goods  to  His  Majesty 
or  such  member  of  the  Royal  Family,  he  shall  be  guilty  of  an 
offence  and  liable  on  conviction  to  a  fine  not  exceeding  three 
hundred  rupees :  Provided  that  nothing  in  this  Sub-section  shall 
be  construed  as  affecting  the  right,  if  any,  of  the  proprietor  of 
a  trade  mark  containing  any  such  arms,  device,  emblem,  or  title 
to  continue  to  use  such  trade  mark. 

INTERNATIONAL  AND  INTERCOLONIAL  ARRANGEMENTS 
International  arrangements — Priority  registration 
58.  (1)  If  His  Majesty  is  pleased  by  Order-in-Council  to 
apply  the  provisions  of  section  91  of  the  Imperial  Act  entitled 
"The  Patents  and  Designs  Act,  1907,"*  to  the  Protectorate, 
then  any  person  who  has  applied  for  the  protection  for  any 
trade  mark  in  any  foreign  State  with  the  Government  of  which 
His  Majesty  has  made  an  arrangement  under  the  said  Section 
for  mutual  protection  to  trade  marks,  shall  be  entitled  to  regis- 
tration of  his  trade  mark  under  this  Ordinance  in  priority  to 
other  applicants,  and  such  registration  shall  take  effect  from 
the  same  date  as  the  date  of  the  application  in  such  foreign 
State. 

(2)  Every  application  for  the  registration  of  a  trade  mark 
under  this  Section  shall  be  made  within  four  months  from  the 
date  of  the  application  for  protection  in  such  foreign  State. 

(3)  Nothing  in  this  Section  contained  shall  entitle  the  pro- 
prietor of  the  trade  mark  to  recover  damages  for  infringements 
happening  prior  to  the  date  of  the  actual  registration  of  his 
trade  mark  in  the  Protectorate. 

(4)  The  use  in  the  Protectorate  during  the  period  aforesaid 
of  the  trade  mark  shall  not  invalidate  the  registration  thereof. 

(5)  The  application  for  the  registration  of  a  trade  mark 
under  this  section  shall  be  made  in  the  same  manner  as  an 
ordinary  application  under  this  Ordinance.    Provided  that  any 
trade  mark  the  registration  of  which  has  been  duly  applied  for 
in  the  country  of  origin  may  be  registered  under  this  Ordinance. 

(6)  The  provisions  of  this  Section  shall  apply  only  in  the 
case  of  those  foreign  States  with  respect  to  which  His  Majesty 
shall  from  time  to  time  by  Order-in-Council  declare  the  pro- 
vision of  the  aforesaid  Section  91  of  the  Patents  and  Designs 
Act,  1907,  to  be  applicable,  and  so  long  only  in  the  case  of  each 
State  as  such  Order  continues  in  force  with  respect  to  that  State. 

Intercolonial  arrangements 
59.     (1)  Whenever  it  appears  to  the  Governor  in  Council 

*See  Great  Britain:    Patents  and  Designs  Act,  1907,  Sec.  91. 


278  EAST  AFRICA  PROTECTORATE 

that  the  Legislature  of  any  British  Possession  or  Protectorate 
has  made  satisfactory  provision  for  the  protection  in  such  Pos- 
session or  Protectorate  of  trade  marks  registered  in  the  Pro- 
tectorate, the  Governor  may  by  Order  apply  all  or  any  of  the 
provisions  of  the  last  preceding  Section  of  this  Ordinance  with 
such  variations  or  additions  as  may  seem  fit  to  trade  marks 
registered  in  such  British  Possession  or  Protectorate. 

(2)  An  Order-in-Council  under  this  Section  shall,  from  a 
date  to  be  mentioned  in  the  Order,  take  effect  as  if  its  pro- 
visions had  been  contained  in  this  Ordinance,  but  the  Governor 
in  Council  may  revoke  such  Order. 

GENERAL, 
Provisions  as  to  public  holidays 

60.  Whenever  the  last  day  fixed  by  this  Ordinance,  or  by 
any  rule  for  the  time  being  in  force,  for  leaving  any  document 
with,  or  paying  any  fee  to  the  Registrar,  shall  fall  on  a  Sunday 
or  public  holiday,  it  shall  be  lawful  to  leave  such  document  or 
to  pay  such  fee  on  the  day  next  following  such  Sunday  or  public 
holiday  or  holidays  if  two  or  more  of  them  occur  consecutively. 

Infants,  lunatics,  &c. 

61.  If  any  person  is,  by  reason  of  infancy,  lunacy  or  other 
disability,  incapable  of  making  any  affidavit  or  doing  anything 
required  or  permitted  by  this  Ordinance  or  by  any  rules  made 
under  the  authority  of  this  Ordinance,  then  the  guardian  of  such 
incapable  person,  or  if  there  be  none,  any  person  appointed  by 
any  Court  possessing  jurisdiction  in  respect  of  the  property  of 
incapable  persons  upon  the  petition  of  any  person  on  behalf  of 
such  incapable  person,  or  any  other  person  interested  in  the 
making  of  such  affidavit  or  doing  such  thing,  may  make  such 
affidavit,  or  an  affidavit  as  nearly  corresponding  thereto  as  cir- 
cumstances may  permit,  and  do  such  thing  in  the  name  and  on 
behalf  of  such  incapable  person,  and  all  acts  done  by  such  sub- 
stitute shall,  for  the  purposes  of  this  Ordinance,  be  as  effectual 
as  if  done  by  the  person  for  which  he  is  substituted. 

Powers  of  Customs  authorities  to  detain  goods  in  certain  cases 

62.  Any  person  who  has  duly  registered  his  trade  mark  in 
respect  of  any  goods  in  Great  Britain  may  by  himself,  his  agent 
or  representative  in  the  Protectorate  on  giving  notice  in  writing 
to  the  Chief  of  Customs  that  goods  bearing  a  mark  so  nearly 
resembling  his  trade  mark  as  to  be  well  calculated  to  deceive 
are  being  imported  into  the  Protectorate,  cause  the  said  goods 
to  be  detained  by  the  Chief  of  Customs  until  the  rights  of  the 
matter  have  been  determined  according  to  law.    Provided  that 
any  such  informant  shall  reimburse  to  the  Chief  of  Customs  all 


EAST  AFRICA  PROTECTORATE  279 

expenses  and  damages  incurred  in  respect  of  such  detention 
made  on  his  information,  and  of  any  proceedings  consequent  on 
such  detention.  And  provided  further  that  the  Chief  of  Customs 
may  refuse  to  detain  any  such  goods  as  aforesaid  unless  and 
until  the  informant  shall  give  a  guarantee  with  sureties  to  be 
approved  by  the  Chief  of  Customs  for  the  due  payment  of  such 
expenses  and  damages. 


ECUADOR 

LAW  OF  OCTOBER  28,  1908,  AS  AMENDED 

SEPTEMBER  14, 1914 

CHAPTER  I 

INTRODUCTORY 

ARTICLE  1.  A  trade  mark  is  any  sign,  emblem,  word, 
phrase,  or  special  and  characteristic  designation  used  to  dis- 
tinguish articles  and  to  denote  their  origin. 

ART.  2.    An  article  is  any  industrial  product. 

ART.  3.  Any  person,  natural  or  legal,  native  or  foreign, 
has  the  right  to  distinguish  his  articles  by  means  of  a  mark  and 
to  register  it  in  accordance  with  this  law. 

ART.  4.     Trade  marks  are  domestic  or  foreign : 

They  are  domestic  when  they  are  used  on  articles  produced 
in  the  Republic ;  and 

They  are  foreign  when  they  are  used  on  articles  produced 
outside  of  the  Republic ; 

Domestic  trade  marks,  as  well  as  foreign  trade  marks,  are 
subject  to  the  provisions  of  this  law  and  enjoy  the  same  rights. 

ART.  5.  A  trade  mark  may  consist  in  anything  which  is 
not  prohibited  by  this  law,  and  which  serves  to  distinguish  some 
articles  from  others  identical  or  similar  but  of  different  origin. 

ART.  6.  The  following  may  not  be  registered  as  trade 
marks : 

1)  Letters,  words,  names,  coats  of  arms,  emblems  or  insig- 
nia that  are  used  by  the  Nation  or  its  municipalities  or  even 
foreign  States  or  cities; 

2)  Immoral  expressions  or  representations; 

3)  The  name  of  a  person,  natural  or  legal,  unless  it  is  pre- 
sented in  a  peculiar  and  distinctive  form; 

4)  A  mark  similar  to  one  already  registered  or  used  by 
another,  if  it  is  intended  for  articles  of  the  same  nature;  and 

5)  The  name  or  portrait  of  a  person  without  his  consent, 
or  that  of  his  heirs  if  he  be  deceased. 

CHAPTER  II 

THE  USE  AND  OWNERSHIP  OF  A  MARK 
ART.  7.     The  use  and  registration  of  a  mark  is  optional, 

but  it  shall  be  obligatory  when  the  public  welfare  requires  it. 
ART.  8.    A  trade  mark  can  be  used  on  the  article  itself  or 

on  the  wrappers  or  packages  that  contain  it. 

ART.  9.    He  is  the  owner  of  a  mark  who  first  has  made  use 


ECUADOR  281 

of  same  to  distinguish  his  articles,  but  the  mark  shall  not  enjoy 
the  rights  and  guarantees  granted  by  this  law  if  it  has  not  been 
registered. 

ART.  10.  The  ownership  of  a  mark  consists  in  the  right 
to  use  it  exclusively  for  the  articles  for  which  it  is  intended. 

If  the  mark  is  national  and  not  used  within  the  year  in 
which  it  was  granted,  it  shall  lapse. 

If  the  mark  is  foreign,  the  importation  of  the  article  into 
Ecuador  is  not  necessary. 

ABT.  11.    A  mark  may  be  inherited  or  transferred. 

ABT.  12.  A  mark  may  only  be  transferred  in  connection 
with  the  industry  to  which  the  article  belongs  for  which  it  is 
intended;  and  the  sale  of  the  industry  shall  comprehend  that 
of  the  mark,  in  the  absence  of  stipulation  to  the  contrary.  Every 
transfer  of  a  registered  mark  shall  be  recorded  in  the  Register ; 
unless  this  is  done,  it  shall  have  no  effect. 

CHAPTER  III 

REGISTRATION  AND  INSCRIPTION 

ART.  13.  The  registration  of  marks  shall  continue  under 
the  direction  of  the  Minister  of  Finance. 

ART.  14.  The  registration  of  a  mark  may  be  applied  for 
in  person  or  through  an  attorney  with  power  of  attorney  granted 
by  public  instrument. 

ART.  15.  The  application  for  registration  shall  be  pre- 
sented to  the  Minister  of  Finance. 

The  application  shall  be  accompanied  by: 

1)  A   power   of   attorney   if   the   applicant   appears    by 
attorney ; 

2)  Twenty  facsimiles  of  the  mark; 

3)  An  electrotype  of  the  mark.    The  length  and  breadth 
of  the  electrotype  shall  not  be  less  than  15  mm.  or  more  than 
100  mm.,  and  its  height  shall  be  from  20  to  30  mm.    When  a 
trade  mark  is  made  up  of  several  separate  parts,  an  electrotype 
of  each  one  of  them  shall  be  sent; 

4)  A  receipt  from  the  Public  Treasury  by  which  is  shown 
the  payment  of  the  fees  prescribed  in  this  law; 

5)  A  consent  in  writing  in  the  case  mentioned  in  section  8 
of  Art.  6.    This  consent  shall  not  be  necessary  when  the  mark 
in  question  is  a  foreign  one  duly  registered  in  the  country  of  its 
origin.    Neither  shall  it  be  necessary  for  the  renewal  of  a  mark 
already  registered  according  to  this  law. 

ART.  16.    In  the  application  there  shall  be  stated: 

1)  The  name  and  domicile  of  the  owner  of  the  mark; 

2)  A  detailed  specification  or  description  of  the  mark,  de- 


282  ECUADOR 

termining  what  is  claimed  as  its  essential  particulars; 

3)  The  article  or  articles  for  which  the  mark  is  intended; 

4)  The  nationality  of  the  mark; 

5)  The  country  and  city,  or  place,  in  which  the  article  is 
manufactured. 

ART.  17.  The  application  having  been  presented,  the  Sub- 
secretary  of  the  Ministry  shall  note  the  day  and  the  hour  in 
which  it  is  received,  shall  number  and  rubricate  each  sheet,  and 
shall  bring  it  to  the  attention  of  the  Minister  within  three  days. 
If  he  does  not  bring  it  to  his  attention  within  that  time,  a  fine 
shall  be  imposed  upon  him  of  twenty  sucres  for  each  day  of 
delay. 

ART.  18.  If  the  application  be  according  to  Arts.  15  and 
16,  and  if  the  mark  be  not  in  conflict  with  Art.  6,  the  Minister 
shall  order  that  the  facsimile  of  the  mark  be  published 
twelve  times,  seven  days  at  least  intervening  between  each  two 
publications.  In  addition,  at  the  bottom  of  the  facsimile,  in 
synthetic  form,  a  statement  concerning  the  application  shall 
be  made. 

Said  publication  shall  be  made  on  delivery  of  the  receipt 
of  the  Fiscal  Treasury,  by  which  is  evidenced  that  the  fees 
prescribed  by  law  have  been  paid. 

ART.  19.  If  any  person  shall  allege  that  the  mark  that  it 
is  desired  to  register  belongs  to  him  because  of  his  having 
registered  and  used  it  previously,  or  that  the  mark  conflicts 
with  Art.  6,  he  may  oppose  its  registration.  In  this  case  the 
Minister  shall  send  the  exhibits  to  some  one  of  the  Cantonal 
Judges  of  the  Capital  of  the  Republic  in  order  that  the  dispute 
may  be  judicially  decided  in  ordinary  procedure. 

ART.  20.  The  application  having  been  published  and  the 
period  of  publication  elapsed,  if  there  has  been  no  opposition, 
the  Minister  shall  order  the  registration  of  the  mark. 

ART.  21.  Whoever  may  believe  himself  injured  may  apply 
for  the  cancellation  of  the  registration,  if  registration  has  taken 
place ;  but  this  action  shall  become  outlawed  in  five  years  count- 
ing from  date  of  registration.  The  case  shall  be  tried  in  ordi- 
nary judicial  proceedings. 

ART.  22.  In  the  actions  foreseen  in  the  preceding  Arts.  19 
and  21,  if  the  decision  is  favorable  to  the  plaintiff,  the  registra- 
tion shall  be  annulled,  or  the  application  shall  be  rejected,  in 
cases  of  opposition.  In  both  actions  he  who  loses  shall  be  sen- 
tenced to  pay  damages  and  costs. 

ART.  23.  The  owner  of  the  mark  shall  pay  twenty-five 
sucres  for  the  right  of  registration  or  renewal ;  for  the  registra- 
tion and  certificate  of  transfer,  ten  sucres,  and  for  each  publica- 


ECUADOR  283 

tion,  one  sucre. 

ART.  24.  It  is  not  necessary  that  there  precede  the  publica- 
tion prescribed  in  Art.  18  for  the  renewal  of  a  mark  previously 
registered  under  this  law. 

ART.  25.  In  the  same  decree  in  which  the  Minister  grants 
the  registration,  he  shall  order  that  the  record  be  filed  and  the 
copies  that  the  applicant  may  ask  for  be  delivered.  The  Minis- 
ter shall  return  to  the  applicant  one  of  the  copies  of  the  mark 
with  notation. 

ART.  26.  The  decree  of  registration  shall  be  transcribed 
literally  in  the  Register,  the  date  thereof  being  thus  determined. 
The  Sub-secretary  shall  certify  that  it  is  a  copy  of  the  decree 
issued  by  the  Minister  and  shall  indicate  the  number  of  the 
record  in  which  the  original  proceedings  are  to  be  found. 

ART.  27.  The  effects  of  the  registration  shall  count  from 
the  date  on  which  it  was  applied  for. 

ART.  28.  The  Register  shall  be  made  up  each  year,  con- 
sisting of  the  registrations  that  have  been  effected  between 
January  1  and  December  31. 

Registrations  shall  be  effected  in  sequence,  without  leaving 
more  space  between  them  than  one  line,  and  numbered  accord- 
ing to  the  date  of  the  decree  in  regard  to  registration. 

At  the  end  of  each  Register  an  alphabetical  index  shall  be 
made  of  the  applicants,  stating  the  number  of  the  registration 
and  the  page  on  which  it  is  to  be  found. 

The  records  shall  also  be  numbered,  and  the  numbering 
shall  correspond  with  that  of  the  registration. 

ART.  29.  The  registration  of  a  trade  mark  shall  only  re- 
main in  force  for  twenty  years;  this  period  having  ended,  it 
shall  lapse  unless  its  renewal  is  obtained  in  good  time.  Each 
renewal  shall  continue  for  fifteen  years  and  shall  entail  the  same 
fees  as  were  paid  for  obtaining  registration. 

Any  registration  can  be  renewed  before  it  lapses  and  after 
the  fees  prescribed  by  this  law  have  been  paid.  The  proper 
receipt  having  been  presented  to  the  Sub-secretary  of  the  Minis- 
try, he  shall  note  the  renewal  of  the  mark  upon  the  Register, 
and  shall  give  a  certificate  to  the  interested  party,  or  shall  make 
a  note  of  the  renewal  upon  the  copy  mentioned  in  Art.  25. 

ART.  30.  The  paper  which  shall  be  used  for  applications 
and  decrees  of  registration  shall  be  stamped  paper  of  the  fifth 
class. 

ART.  31.  The  Sub-secretary  of  the  Ministry  must  give,  on 
the  proper  stamped  paper  and  without  requiring  fees,  the  copies 
which  may  be  asked  for. 


284  ECUADOR 

CHAPTER  IV 

NAMES,  INSIGNIA,  ETC. 

ART.  32.  The  name  of  a  merchant  or  producer,  that  of  a 
firm,  or  corporation,  the  sign  or  designation  of  a  house  or  estab- 
lishment that  deals  in  certain  articles  or  products,  constitute 
property  for  the  purposes  of  this  law. 

ART.  33.  He  who  desires  to  carry  on  an  industry,  business 
or  a  branch  already  exploited  by  another  person  with  the  same 
name  or  with  the  same  conventional  designation,  shall  adopt  a 
modification  of  such  a  nature  that  the  latter  name  or  designa- 
tion shall  be  visibly  distinct  from  that  which  the  pre-existing 
house  or  establishment  uses. 

ART.  34.  If  the  party  injured  by  the  use  of  a  name  does 
not  bring  action  within  the  term  of  one  year  from  the  day  on 
which  another  began  to  use  it  publicly,  he  shall  lose  his  right  to 
any  action.  This  action  shall  be  tried  in  ordinary  judicial  pro- 
ceedings before  the  Cantonal  Judge  (Alcalde). 

ART.  35.  Joint  stock  companies  shall  have  the  same  right 
to  the  name  they  bear  as  any  private  person,  and  are  subject 
to  the  same  limitations. 

ART.  36.  The  right  to  the  exclusive  use  of  a  name  as  prop- 
erty shall  be  extinguished  with  the  business  house  that  bears  it 
or  with  the  enterprise  for  which  it  was  intended. 

CHAPTER  V 

PENALTIES 

ART.  37.  There  shall  be  punished  with  a  fine  of  from  five 
hundred  to  one  thousand  sucres  and  imprisonment  of  from  six 
months  to  one  year: 

1)  Those  that  imitate  a  genuine  mark; 

2)  Those  that  sell  or  offer  for  sale,  buy  or  have  in  their 
possession,  imitation  marks; 

3)  Those  that  sell  or  offer  for  sale,  buy  or  have  in  their 
possession,  genuine  marks  without  the  consent  of  the  owner, 
which  is  presumed  when  there  is  protest  on  the  part  of  the 
latter ; 

4)  Those  that  make  use  of  imitation  marks,  placing  them 
on  articles  that  they  make  or  on  merchandise  in  which  they 
deal;  which  is  presumed  against  him  that  has,  sells,  or  offers 
for  sale  said  merchandise  thus  marked ; 

5)  Those  that  sell  or  retail  merchandise  that  bears  an  imi- 
tation mark ; 

6)  Those  that  use  on  the  articles  that  they  make,  or  on 
the  merchandise  in  which  they  deal,  marks  that  contain  false 
indications  in  regard  to  the  nature,  quantity,  quality,  origin 


ECUADOR  285 

and  source  of  either  one  or  the  other ;  or  that  state  falsely  that 
they  have  been  awarded  orders,  medals,  diplomas  or  other  dis- 
tinctions in  expositions  or  in  any  other  manner ; 

7)  Those  that,  without  imitating  a  mark,  detach  or  separate 
it  from  certain  articles  in  order  to  apply  it  to  others ; 

8)  Those  that  place  their  name,  that  of  their  establishment, 
or  any  word  or  sign,  upon  a  genuine  mark ; 

9)  Those  that  refill  with  spurious  products  receptacles  with 
a  mark  belonging  to  another;  those  that  refill  them  with  prod- 
ucts which  do  not  correspond  with  the  genuine  product  as  stated 
in  the  mark  borne  by  the  vessel ;  those  that  mix  genuine  products 
that  bear  genuine  marks  with  other  products  different  or  spuri- 
ous ;  and  those  that  sell,  resell,  or  have  in  their  possession,  such 
products.    This  last  is  presumed  if  such  products  are  found  in 
their  stores,  warehouses,  or  shops. 

ART.  38.  The  guilty  parties  shall  be  sentenced  to  pay 
costs  and  damages  to  the  injured  parties. 

ART.  39.  All  imitation  marks,  with  the  exception  of  one, 
which  shall  be  a  part  of  the  record,  shall  be  destroyed  by  the 
Secretary  in  the  presence  of  the  Judge  and  two  witnesses.  This 
shall  be  done  after  the  experts  render  their  report,  if  in  same 
they  establish  that  they  are  imitations. 

ART.  40.  Articles  that  bear  imitation  marks  shall  be  sold 
at  public  auction,  provided  that  they  are  not  harmful,  in  which 
case  they  shall  be  destroyed,  and  the  proceeds  shall  be  divided 
in  equal  parts  between  the  Treasury  and  the  informant.  If  the 
mark  was  used  on  the  article,  the  former  shall  first  be  destroyed. 

ART.  41.  It  is  presumed  that  an  article  is  offered  for  sale, 
if  it  is  held  in  a  warehouse,  store  or  shop. 

ART.  42.  An  imitation  mark  is  one  not  registered,  the  same 
as  or  similar  to  one  registered.  There  is  similarity  when  both 
marks  have  one  or  more  similar  essential  particulars,  or  when 
they  may  be  confused  at  first  sight,  and  when  only  by  means  of 
a  careful  examination  it  is  possible  to  distinguish  one  from  the 
other. 

CHAPTER  VI 

PROCEDURE 

ART.  43.  The  infractions  mentioned  in  this  law  may  be 
officially  prosecuted. 

ART.  44.  The  corpus  delicti  is  established  by  the  report 
of  the  experts,  if  they  determine  that  there  is  imitation.  There 
shall  be  two  experts,  named  by  the  parties;  and,  as  regards 
the  recusation,  there  shall  be  observed  the  provisions  of  the 
Code  of  Procedure  in  Civil  Matters. 


286  ECUADOR 

ART.  45.  The  persons  accused,  if  there  are  against  them 
any  of  the  presumptions  established  in  this  law,  shall  be  im- 
mediately committed  to  prison,  unless  they  give  bail  of  five 
thousand  sucres,  and  the  goods  shall  be  deposited  with  a  re- 
sponsible person  until  the  termination  of  the  proceedings. 

ART.  46.  The  Minister  of  Finance  shall  send  to  each  cus- 
toms officer  a  copy  of  the  registration  of  each  foreign  mark 
that  has  been  or  shall  be  registered,  with  a  facsimile  of  said 
mark. 

ART.  47.  When  an  attempt  is  made  to  import  merchan- 
dise with  imitation  marks,  the  customs  officer  shall  place  them 
at  the  disposition  of  any  Justice  of  the  Peace,  as  well  as  the 
invoices,  manifests  and  other  documents  that  refer  to  them. 

The  omission  of  this  duty  will  make  him  responsible  for 
complicity  in  the  offence,  without  prejudice  to  a  fine  of  five 
hundred  sucres,  which  the  Minister  of  Finance  shall  impose 
upon  him. 

ART.  48.  Every  machine  or  instrument  intended  for  the 
counterfeiting  of  marks  shall  be  confiscated. 

ART.  49.  Registrations  effected  up  to  the  date  on  which 
this  law  is  decreed  shall  remain  in  force  for  twenty  years,  count- 
ing from  that  date,  and  shall  enjoy  during  that  period  the  bene- 
fits prescribed  by  this  law,  and  shall  be  subject  to  the  limita- 
tions of  the  same.  Said  registrations  should  be  renewed  at  the 
expiration  of  the  twenty  years  to  which  this  article  refers. 


EGYPT 

No  trade  mark  law. 

Trade  marks  may  be  registered  at  the  Mixed  Courts  at 
Cairo,  Alexandria  and  Mansourah. 

Infringements  are  prosecuted  under  the  common  law. 


ERITREA 

ROYAL  DECREE  OF  DECEMBER  5,  1907 

ARTICLE  1.  Whoever  has  acquired  in  Italy  the  right  to  the 
exclusive  use  of  a  trade  mark  according  to  the  law  of  August 
30,  1868  (No.  4577),  shall  have  the  right  to  protection  of  this 
mark  in  the  territory  of  the  Colony  of  Eritrea  through  the  ad- 
ministrative and  judicial  authorities,  in  accordance  with  the 
present  provisions. 

Merchants  or  manufacturers  who  have  establishments  in 
the  Colony  of  Eritrea  can  obtain  protection  for  the  trade  marks 
that  they  have  adopted  for  their  products  or  merchandise,  by 
conforming  to  the  present  provisions. 

ART.  2.  In  the  application  of  the  first  paragraph  of  Art.  1 
there  shall  be  considered  as  commercial  or  manufacturing  marks 
any  denomination,  name,  or  other  sign  that  is  applied  to  the 
products  of  an  industry  or  the  articles  of  a  commercial  enter- 
prise for  the  purpose  of  distinguishing  them  from  any  other 
products  or  objects. 

ART.  3.  The  mark  must  be  different  from  those  already 
legally  employed  by  other  persons  and  it  must  be  registered  in 
order  that  its  exclusive  use  may  be  acquired. 

ART.  4.  The  assignee  or  the  industrial  or  commercial  suc- 
cessor may  preserve  the  right  to  the  mark  of  its  originator  by 
immediately  making  declaration  thereof  in  writing. 

ART.  5.  A  merchant  may  not  eliminate  the  distinctive  mark 
or  sign  of  the  producer  from  his  merchandise  without  the  ex- 
press consent  of  the  latter ;  however,  he  may  add  thereto  his  own 
mark  or  the  distinctive  sign  of  his  commercial  enterprise. 

ART.  6.  Over  and  above  the  general  interdiction  as  re- 
spects usurping  the  name  or  the  style  of  a  company  or  of  an 
individual,  it  is  also  prohibited  to  appropriate  the  commercial 
name,  or  even  the  insignia  of  the  enterprise,  the  characteristic 
emblem,  the  denomination  or  the  title  of  an  association  or  of  a 
corporation,  and  to  place  it  on  shops,  on  the  articles  of  industry 
or  of  commerce,  or  designs,  engravings  or  other  works  of  art, 
even  when  the  said  commercial  name,  the  insignia,  the  emblem, 
the  denomination  or  title  do  not  constitute  part  of  a  distinctive 
mark  or  sign,  or  have  not  been  registered  in  accordance  with 
the  law. 

ART.  7.  The  Financial  Administration  of  the  State  or  of 
the  Colony  may  adopt  marks  or  signs  to  protect  the  products  of 
its  manufactures  or  the  sale  of  products  of  exclusive  monopoly, 


ERITREA  289 

by  conforming  to  the  provisions  of  the  present  law;  and  this 
without  prejudice  to  the  provisions  in  force,  as  regards  the 
Administration  of  the  State  or  of  the  Colony,  of  the  laws  con- 
cerning the  production  and  the  classification  of  these  products. 
ART.  8.  Whoever  shall  wish  to  secure  for  himself  in  the 
Colony,  the  exclusive  use  of  a  distinctive  mark  or  sign  in  the 
sense  of  Art.  2  and  following,  shall  present  at  the  competent 
Office  of  the  Government: 

a)  Two  fascimiles  of  the  mark  or  of  the  distinctive  sign  that 
it  is  his  intention  to  adopt ; 

b)  A  declaration,  in  duplicate,  in  which  is  expressed  his 
desire  to  reserve  the  rights  belonging  to  him,  and  in  which  shall 
be  indicated  the  nature  of  the  articles  on  which  he  desires  to 
place  the  mark  or  the  sign,  declaring  whether  the  mark  or  dis- 
tinctive sign  is  to  be  placed  on  articles  produced  by  him  or  on 
merchandise  in  which  he  deals ; 

c)  A  description,  in  duplicate,  of  the  mark  or  distinctive 
sign; 

d)  A  receipt  for  payment  by  him  of  forty  lire  as  fee  and 
costs  for  each  mark  or  distinctive  sign. 

Successors  or  assignees  shall  pay  a  fee  of  two  lire  for  the 
registration  of  the  declaration  prescribed  by  Art.  4. 

ART.  9.  As  soon  as  it  is  found  that  the  documents  filed 
are  in  order,  as  far  as  concerns  their  extrinsic  value,  the  Office 
of  the  Government  shall  inscribe  upon  the  above  mentioned 
declaration  a  memorandum  indicating  the  day  and  the  hour 
when  these  documents  were  filed;  and  it  shall  transmit  to  the 
Minister  of  Foreign  Affairs  an  abstract  of  the  declaration  and 
of  the  description,  to  the  end  that  they  may  be  published  in  the 
Gazzetta  Ufficiale  del  Regno  of  the  Kingdom.  A  similar  abstract 
shall  be  published  in  the  Bollettino  Ufficiale  of  the  Colony. 

One  of  the  copies  of  the  declaration  with  the  certification 
of  the  date  of  its  presentation  and  of  the  publication  in  the 
Bollettino  Ufficiale  shall  be  returned  to  the  applicant,  and  also 
one  copy  of  the  mark  and  its  description,  provided  with  the 
endorsement  of  the  Government. 

The  other  copies  of  these  documents,  with  the  receipt  men- 
tioned under  (d)  of  Art.  8,  shall  be  retained  by  the  Government 
and  may  be  examined  by  anyone  making  a  demand  to  that  effect. 

ART.  10.  The  certificate  does  not  guarantee  the  impor- 
tance and  the  validity  of  the  mark  or  distinctive  sign,  or  the 
quality  or  origin  of  the  products,  or  the  existence  of  other  con- 
ditions requisite  to  the  validity  or  efficacy  of  the  exclusive  right. 

ART.  11.  The  right  to  make  exclusive  use  of  the  mark  or 
distinctive  sign  shall  commence  to  exist,  in  favor  of  the  decla- 


290  ERITREA 

rant,  from  the  date  of  registration  effected  at  the  Office  of  the 
Government.  But  the  effects  of  this  right,  in  regard  to  fines 
and  damages,  are  only  produced  upon  the  publication  in  the 
Bollettino  Ufficiale. 

ART.  12.  There  is  prohibited  the  use  of  advertisements 
made  by  means  of  journals  and  prospectuses,  circulars,  public 
proclamations,  and,  in  general,  by  any  other  means  of  publicity 
whatever,  if  by  them  is  given,  in  regard  to  a  certain  merchan- 
dise, product  or  industrial  service,  false  statements  of  fact 
calculated  to  give  them  a  particular  advantage  or  to  obtain  the 
favor  of  the  public  to  the  detriment  of  other  similar  products. 

This  prohibition  relates  to  the  use  of  false  statements : 

1)  Of  the  nature  of  the  merchandise  or  the  service  or  in- 
dustrial product; 

2)  Of  the  price; 

3)  Of  the  method  and  means  of  production; 

4)  Of  the  mines,  shafts  or  sources  whence  the  merchan- 
dise has  been  extracted,  or  any  other  similar  indication; 

5)  Of  the  possession  of  patents  or  rewards  of  honor; 

6)  Of  the  reason  for  and  the  purpose  of  the  sale. 
There  are  also  prohibited  advertisements  effected  by  the 

means  indicated  above,  and  any  other  communication  by  which 
are  spread,  for  the  purpose  of  competition,  false  statements 
calculated  to  cause  damages  to  the  establishment  or  the  credit 
of  a  manufacturer  or  of  a  merchant. 

ART.  13.  It  is  forbidden  to  counterfeit  or  imitate  the  form, 
the  color  or  the  arbitrary  designation  which,  for  the  purpose  of 
distinguishing  it,  have  been  placed  upon  a  product,  upon  its 
wrapper  or  upon  the  receptacles  which  contain  it,  so  as  to  pro- 
duce confusion  with  the  products  of  the  same  person  or  with 
those  of  another. 

ART.  14.  Without  prejudice  to  more  severe  penalties  laid 
down  by  the  penal  code  for  acts  which  are  here  named,  he  shall 
be  punished  with  a  fine  up  to  two  thousand  lire,  even  when  the 
act  has  not  been  done  to  the  prejudice  of  third  parties : 

1)  Who  violates  the  provisions  of  Arts.  5,  6,  7,  12  and  13 
of  the  present  law ; 

2)  Who  counterfeits  a  mark  or  distinctive  sign  and  who 
knowingly  makes  use  of  same ; 

3)  Who,  without  actually  having  counterfeited  a  mark  or 
a  distinctive  sign,  makes  a  fraudulent  imitation  of  same,  or  who, 
knowingly  makes  use  of  a  counterfeit  or  fraudulently  imitated 
mark  or  sign; 

4)  Who,  knowingly,  places  in  circulation,  sells  or  imports 
from  abroad,  and  for  commercial  use,  products  bearing  a  fraud- 


ERITREA  291 

ulently  counterfeited  or  imitated  mark  or  sign; 

5)  Who  knowingly  makes  use  of  a  mark  or  sign,  insignia 
or  emblem,  bearing  false  statements  calculated  to  lead  the  pur- 
chaser into  error  regarding  the  nature  of  the  product,  or  who 
sells  products  provided  with  such  marks,  signs  or  emblems. 

In  case  of  repeated  offence  the  fine  shall  be  from  two  hun- 
dred to  four  thousand  lire.  In  any  case  it  shall  not  be  less  than 
double  the  amount  of  the  fine  imposed  for  the  preceding  offence. 

The  counterfeit  marks  or  signs,  the  instruments  which  have 
served  for  the  fraud,  as  well  as  the  products  and  articles  bear- 
ing such  counterfeit,  shall  be  confiscated. 

The  altered  marks  or  signs,  insignia  or  emblems,  shall  be 
redintegrated  at  the  expense  of  the  delinquent  party. 

ART.  15.  The  above  penalties  shall  be  inflicted  without 
prejudice  to  damages. 

Whoever  establishes  his  good  faith  in  the  acts  named  in 
Arts.  12  and  13  shall  be  exempt  from  the  penalty. 

The  interested  party  may  in  any  case,  even  in  civil  cases, 
have  recourse  to  the  judicial  authority: 

1)  For  the  recovery  of  damages; 

2)  To  enjoin  the  use  of,  the  repetition  of,  or  the  later  circu- 
lation of,  false  indications  that  injure  him; 

3)  To  enjoin  the  use  of  distinctive  signs  liable  to  cause 
confusion ; 

4)  To  obtain  the  publication  of  the  judgment  in  the  press. 
ABT.  17.    In   the    proceedings    to    recover    damages,    the 

claimant  may  relinquish  his  right  to  prove  the  amount  of  the 
damage  suffered,  and  rely,  for  pecuniary  relief,  upon  the  esti- 
mate of  the  magistrate. 

ART.  18.  Regulations  approved  by  decree  of  the  Governor 
of  the  Colony  shall  specially  provide  more  detailed  provisions, 
the  summary  publication  of  the  certificates  issued  by  the  Gov- 
ernment, and  everything  which  shall  be  necessary  for  the  execu- 
tion of  the  present  provisions. 


ESTHONIA 

LAW  OF  APRIL  15,  1921* 

SECTION  124.  There  shall  be  considered  as  a  trade  mark 
any  kind  of  mark  that  is  affixed  to  merchandise  or  the  wrappers 
or  containers  thereof  by  manufacturers  or  merchants  for  the 
purpose  of  distinguishing  this  merchandise  from  the  wares  of 
other  merchants  or  manufacturers,  for  example :  stamps,  pyro- 
graphed  marks,  seals,  capsules,  textile  marks  (woven  and  em- 
broidered), labels,  vignettes,  devices,  signatures,  wrappers,  as 
well  as  the  combination  of  individual  letters  and  numbers, 
words,  combinations  of  words,  regardless  of  their  form,  repre- 
sentations of  the  original  packages,  etc. 

SEC.  125.  Manufacturers  and  merchants  are  entirely  free 
in  the  choice  of  their  trade  marks,  save  those  with  reference 
to  which  there  exist  special  legal  provisions. 

SEC.  126.    There  is  prohibited  the  affixing  of  trade  marks: 

1)  Containing  legends   or   representations   that   are   con- 
trary to  public  order  and  to  decorum; 

2)  Containing  legends  or  representations  that  are  mani- 
festly false  or  are  intended  to  deceive  the  buyer;  and 

3)  Containing    representations    of    distinctions    of    merit 
intended  to  be  worn  by  the  manufacturer  or  merchant,  as  well 
as  representations  of  awards  and  diplomas  of  merit  without 
mention  of  the  year  of  their  grant. 

NOTE:  Trade  marks  with  representations  of  awards  and 
diplomas  of  .merit  that  arc  granted  for  certain  goods  may  only 
be  affixed  to  the  corresponding  merchandise. 

SEC.  127.  If  a  manufacturer  or  merchant  desires  to  obtain 
the  exclusive  right  to  a  certain  trade  mark,  he  must  make  appli- 
cation therefor  at  the  Patent  Office  and  receive  from  the  latter  a 
certificate,  on  payment  of  the  fees  stipulated.  The  correspond- 
ing petition  must  be  filed  either  in  person  or  through  the 
intermediary  of  an  attorney,  together  with  the  deposit  of  a 
description  of  the  trade  mark,  a  cliche  (electrotype),  ten  fac- 
similes, and  a  receipt  from  the  Treasury  covering  the  payment 
of  300  marks  for  the  defrayment  of  the  costs  of  the  examination. 
At  the  same  time  the  manufacturer  or  merchant  has  to  state 


*Law  amendatory  of  Russian  Trade  Mark  Law  (Code  of  Laws,  Vol.  XI, 
Part  2,  edition  of  1913) — Russian  Commercial  Ordinance,  Chapter  V,  Sees.  124-146 
and  Law  Concerning  Indirect  Taxes,  Chapter  VI,  Sees.  366-377. 


ESTHONIA  293 

for  what  kinds  of  goods  and  for  what  enterprise  the  trade  mark 
is  intended.  If  the  owner  of  the  trade  mark  resides  abroad, 
then  the  petition  is  to  be  presented  through  the  intermediary  of 
an  attorney  resident  in  Esthonia. 

NOTE:  Trade  marks  of  industrial  and  commercial  enter- 
prises domiciled  abroad  may  be  received  by  the  Patent  Office  for 
registration,  in  accordance  with  this  law,  only  in  the  case  in 
which  they  are  already  legally  protected  in  the  State  in  which 
is  located  the  enterprise  of  the  owner,  and  that  State  grants 
legal  protection  also  to  Esthonian  trade  marks.  The  said  marks 
shall  be  registered  in  the  same  form  as  abroad,  for  which  pur- 
pose there  must  be  presented  documents  in  verification  of  the 
registration  effected  abroad. 

SEC.  128.  Manufacturers  and  merchants  shall  enjoy  the 
exclusive  right  of  use  with  reference  to  such  trade  marks,  with- 
out the  deposit  prescribed  in  the  foregoing  section,  insofar  as 
they  refer  solely  to  the  Christian  and  surnames  of  the  owner  or 
to  the  denomination  and  location  of  the  enterprise,  provided 
that  they  are  not  presented  in  a  particular  manner  and  way, 
for  example,  in  the  form  of  autographs,  monograms,  or  in  fan- 
tastic letters. 

SEC.  129.     (Repealed) 

SEC.  130.  A  manufacturer  or  merchant  is  at  liberty  to 
petition  several  dissimilar  trade  marks  for  goods  of  divers 
kinds  or  sorts. 

SEC.  131.  The  exclusive  right  to  the  use  of  a  trade  mark 
will  not  be  granted  if  the  latter : 

1)  Does  not  fulfill  the  requirements  of  Sec.  126; 

2)  If  it  differs  too  slightly  from  trade  marks  already  regis- 
tered for  wares  of  the  same  class  of  other  manufacturers  or 
merchants ; 

3)  If  it  is  in  common  use  for  certain  goods; 

4)  Contain  the  arms  or  other  distinctives  of  this  or  for- 
eign States,  Cities,  or  even  the  name  or  portrait  of  any  person 
without  corresponding  permission; 

5)  If  it  consists  solely  of  individual    ciphers  or  letters, 
or  of  words  explaining  the  methods  of  production  or  use  of 
certain  goods,  the  time  or  place  of  production,  their  purpose, 
price,  volume  or  weight. 

SEC.  132.  If  the  Patent  Office  has  examined  the  trade  mark 
filed  and  has  found  it  in  compliance  with  the  stipulations  of  this 
law,  it  shall  then  grant  to  the  owner  of  the  mark  a  certificate 
for  the  protection  of  the  exclusive  use  thereof.  In  the  contrary 
case  the  trade  mark  is  not  allowed,  and  the  grounds  for  rejec- 
tion shall  be  given  to  the  applicant  for  protection. 


294  ESTHONIA 

The  applicant,  dissatisfied  with  the  decision  of  the  Patent 
Office,  may,  during  the  course  of  three  months,  reckoned  from 
the  day  of  the  issue  of  the  decision,  file  an  appeal  to  the  Patent 
Office  and,  on  presentation  of  a  receipt  from  the  National 
Treasury  for  300  marks  paid  in,  may  petition  for  a  review  of 
the  case  by  the  Patent  Appeal  Board. 

SEC.  133.  The  certificate  of  protection  gives  to  those 
manufacturers  or  merchants  in  whose  name  it  is  issued  the 
right  for  the  term  therein  stipulated  for  the  exclusive  use  of 
the  trade  mark  applied  for  on  goods,  and  he  may  affix  the  same 
upon  his  goods,  packages,  or  containers  of  the  goods,  as  well 
as  on  circulars,  prices-current  and  business  stationery.  If  the 
trade  mark  is  intended  only  for  a  certain  kind  of  goods,  then 
the  certificate  of  protection  grants  the  right  of  exclusive  use  of 
the  trade  mark  only  for  this  class  of  merchandise. 

SEC.  134.  Certificates  of  protection  for  trade  marks  are 
issued  on  request  of  the  applicant  for  from  1  to  10  years, 
reckoned  from  the  day  of  their  issue.  On  the  expiration  of  the 
term  the  certificate  of  protection  may  be  renewed. 

SEC.  136.  The  certificate  of  protection  shall  be  issued  to 
the  first  applicant  except  if,  during  the  examination  procedure, 
petitions  are  filed  at  the  Patent  Office  for  the  grant  of  exclusive 
enjoyment  of  the  same  trade  mark. 

SEC.  137.  The  grant  of  the  certificate  of  protection  for  a 
trade  mark,  as  well  as  the  expiration  of  the  certificate  of  pro- 
tection, shall  be  published  in  the  Riigi  Teataja. 

SEC.  138.  The  grant  of  a  certificate  of  protection  for  a 
trade  mark  does  not  deprive  others  of  the  right  of  legally 
lodging  claim  to  the  ownership  of  the  right  to  the  exclusive  use 
of  the  said  mark,  within  three  years  from  the  publication  of  the 
certificate  of  protection. 

SEC.  139.  In  case  of  the  transfer  or  lease  of  an  industrial 
or  commercial  enterprise,  the  right  to  the  exclusive  enjoyment 
of  the  trade  mark  that  was  granted  to  the  previous  owner  is 
transferred  to  the  new  owner,  this,  however,  only  with  the  con- 
sent of  the  former  owner;  proof  thereof  is  to  be  filed  with  the 
Patent  Office  within  six  months,  counted  from  the  date  of  the 
assignment  or  lease. 

NOTE  :  The  right  to  the  exclusive  use  of  a  trade  mark  may 
be  assigned  to  the  new  owner  in  the  manner  stipulated  in  this 
article,  even  on  a  partial  assignment  or  lease,  in  case  this  part 
constitutes  an  independent  branch  and  the  mark  to  be  assigned 
was  intended  for  the  goods  of  this  production. 

SEC.  140.  The  certificate  of  protection  and  the  exclusive 
right  of  enjoyment  of  the  trade  mark  shall  expire : 


ESTHONIA  295 

1)  On  corresponding  petition  of  the  owner  of  the  enter- 
prise, or  with  the  giving  up  of  the  latter ; 

2)  In  case   the   certificate   of   protection  is  not  renewed 
within  the  prescribed  term; 

3)  If  the  Patent  Office  is  not  notified  within  six  months 
as  regards  the  transfer  or  lease  of  the  entire  enterprise  or  a 
part  of  the  same; 

4)  In  case  it  is  determined  in  accordance  with  law  that 
the  right  to  the  exclusive  enjoyment  does  not  belong  to  the 
holder. 

SEC.  141.  In  the  cases  mentioned  in  Sec.  140,  Nos.  1  to  3, 
the  right  to  the  exclusive  enjoyment  of  the  trade  mark  may  be 
granted  anew  to  no  one  prior  to  the  expiration  of  three  years 
from  the  publication  of  the  avoidance  of  the  certificate  of  pro- 
tection issued  for  this  mark. 

SEC.  142.  The  violation  of  the  right  to  the  exclusive  enjoy- 
ment of  the  trade  mark  entails,  without  prejudice  to  damages 
and  injuries  for  corresponding  offenses,  a  penal  responsibility 
in  accordance  with  the  stipulations  that  are  contained  in  the 
Penal  Code  and  in  treaties  and  agreements  concluded  with 
foreign  States. 

SEC.  143.  All  trade  marks  granted  for  exclusive  enjoy- 
ment shall  be  registered  by  the  Patent  Office  in  a  special  Regis- 
ter, and  from  these  shall  be  prepared  an  album  that  shall  be 
open  for  consultation  by  those  interested. 

SEC.  144.  The  Minister  of  Commerce  and  Industry  is 
authorized  to  issue  provisions  concerning  procedure  with  refer- 
ence to  the  prescriptions  contained  in  this  Chapter  V,  of  such 
nature  that  they  will  not  conflict  with  these  prescriptions,  nor 
affect  such  matters  as  by  their  nature  are  dependent  on  the 
Courts  or  Legislative  Departments.  These  regulatory  stipula- 
tions are  to  be  made  known  by  the  Council  of  State  in  the 
Riigi  Teataja. 

SEC.  145.  Subjects  or  citizens  of  foreign  States  that  have 
concluded  an  agreement  with  Esthonia  for  the  reciprocal  pro- 
tection of  industrial  property  on  the  basis  of  the  right  of 
priority,  shall  enjoy  the  right  to  obtain  a  certificate  of  protection 
to  the  same  trade  mark,  as  provided  for  in  Sec.  127,  to  the 
extent  that  they  have  requested  in  one  of  these  States  protec- 
tion in  accordance  with  law,  within  four  months  from  the  filing 
of  the  above  application. 

SEC.  146.  Those  that  are  not  citizens  or  subjects  of  such 
foreign  States  as  have  concluded  an  agreement  with  Esthonia 
for  the  reciprocal  protection  of  industrial  property  on  the  basis 
of  the  right  of  priority,  shall  avail  themselves  of  the  advantages 


296  ESTHONIA 

foreseen  in  Sees.  86*,  145,  and  157*,  only  in  case  this  is  particu- 
larly stipulated  in  the  said  agreements.  In  this  case,  the  above 
named  advantages  are  to  be  applied  within  the  limits  and  sub- 
jects to  the  stipulations  foreseen  in  this  agreement. 

SEC.  366 Certificates   of   trade   marks   shall   be 

subject  to  a  fee  corresponding  to  the  duration  of  these ...... 

certificates. 

SEC.  374.  For  each  certificate  of  trade  mark  granted  for 
the  first  time  or  renewed  there  shall  be  collected  in  favor  of  the 
State  a  tax  of  300  marks  for  the  first  year  of  the  duration  of  the 
certificate  and  100  marks  for  each  succeeding  year. 

SEC.  375.  The  taxes  mentioned  in  the  preceding  Section 
(374)  must  be  paid  in  on  the  filing  of  an  application  for  the  grant 
of  a  certificate  for  a  trade  mark,  or  for  the  renewal  of  such  a 
certificate,  in  advance,  for  the  entire  term  of  the  same. 

SEC.  376.  On  petition  for  the  transfer  of  the  certificate  of 
a  trade  mark,  prior  to  the  expiration  of  the  same,  to  the  new 
owner  of  the  industrial  or  commercial  enterprise,  there  shall  be 
collected  a  fee  of  300  marks. 

SEC.  377.  In  case  the  petition  for  the  grant,  the  renewal, 
or  the  transfer  be  decided  adversely,  then  the  deposited  fee  will 
be  returned  to  the  applicant  after  deduction  of  postal  charges 
for  the  return  of  the  money. 

*  Sees.  86  and  157,  referring  respectively  to  patents  and  models  and  designs, 
are  substantially  the  same  as  Sec.  145.  The  former  grants  a  priority  delay  of  12 
months  and  the  latter,  4  months. 


FALKLAND  ISLANDS 

PATENTS  ORDINANCE  OF  FEBRUARY  25,  1903* 

•  •  •  •  •  •          .•  •  •          .  • 

To  whom  certificates  of  registration  may  be  granted 

2.  A  certificate  of  registration  ...  of  any  trade  mark 
may  be  granted  in  this  Colony  to  any  person  who  in  the  United 
Kingdom  is  the  registered  proprietor  of  such  .   .   .  trade  mark 
or  to  any  person  to  whom  all  interest  in  such  .   .   .  trade  mark 
in  respect  of  this  Colony  has  been  assigned. 

Procedure 

3.  Every  application  for  .   .   .  the  registration  of  a  .   .   . 
trade  mark  under  this  Ordinance  shall  be  addressed  to  the  Colo- 
nial Secretary  and  there  shall  be  transmitted  with  such  appli- 
cation : 

(1)  Two  copies  of  the    .    .    .   certificate  of  registration 
granted  in  England; 

(3)  Two  copies  of  any  drawing  in  relation  to  the  .  .  .  trade 
mark; 

(4)  Two  exact  representations  or  specimens  of  the  design; 

(5)  An  affidavit  that  the  applicant  is  the  lawful  owner  of 
the  .   .  .  trade  mark  for  which  protection  is  asked  or  the  as- 
signee of  the  lawful  owner  in  respect  of  this  Colony; 

(6)  A  fee  of  five  pounds. 

All  applications  to  be  filed  and  recorded 

4.  The  Colonial  Secretary  shall  file  every  such  applica- 
tion and  the  enclosures  thereto  and  cause  to  be  entered  in  the 
books  of  record  of  the  Register-General  a  note  of  the  nature  of 
the  .   .   .  trade  mark  and  of  the  filing  of  the  application  and  of 
the  enclosures  thereto. 

Issue  of  certificates  of  registration 

5.  A  certificate  of  the  note  as  entered  in  the  records  shall 
thereupon  be  issued  under  the  hand  of  the  Governor  and  of  the 
Colonial  Secretary  and  under  the  seal  of  the  Colony,  and  such 
certificate  shall  be  the  .  .  .  certificate  of  the  registration  of  the 
.  .   .  trade  mark,  .  .  .  and  shall  confer  upon  the  lawful  holder 
within  the  limits  of  this  Colony  every  right,  title  and  advantage 
which  the  holder  ...  of  the  registration  of  a  .  .  .  trade  mark 
has  in  England  in  respect  of  such  .   .   .  trade  mark,  provided 
that  such  certificate  shall  be  null  and  void  whenever  the  . 


*  Provisions  not  relating  to  trade  marks  are  omitted. 


298  FALKLAND  ISLANDS 

certificate  to  which  it  refers  shall  finally  cease  in  England. 
Supreme  Court  to  afford  all  relief 

6.  The  Supreme  Court  shall  have  power,  subject  to  the 
Patents,  Designs,  and  Trade  Marks  Acts  of  England,  for  the 
time  being,  to  grant,  either  absolutely  or  on  such  terms  and  con- 
ditions as  shall  seem  just,  all  such  remedies  as  either  party  may 
appear  to  be  entitled  to  in  respect  of  either  claim  to  or  defence 
of  any  right,  title  or  interest  in  relation  to  any  .  .  .  registra- 
tion in  force  in  this  Colony  under  a  certificate  granted  under 
this  Ordinance. 

Short  title 

7.  This  Ordinance  may  be  cited  as  the  "Patents  Ordi- 
nance, 1903." 


FIJI  ISLANDS 

ORDINANCE  NO.  1  OF  [APRIL  22,]  1886 
Short  Title 

1.  This  Ordinance  may  be  cited  for  all  purposes  as  "The 
Trade  Marks  Registration  Ordinance,  1886." 

Register  of  Trade  Marks  to  be  established 

2.  A  Register  of  Trade  Marks  as  defined  by  this  Ordinance 
and  of  the  proprietors  thereof  shall  be  established  under  the 
superintendence  of  the  Registrar-General. 

Commencement 

3.  From  and  after  the  first  day  of  January,  1887,  no  pro- 
ceedings to  prevent  the  infringement  of  a  trade  mark  as  de- 
fined by  this  Ordinance  shall  be  instituted  by  any  person  unless 
such  trade  mark  is  registered  in  accordance  with  the  provisions 
of  this  Ordinance. 

Characteristics  of  registered  trade  marks 

4.  A  trade  mark  must  be  registered  as  belonging  to  par- 
ticular goods  or  classes  of  goods  and  when  registered  shall  be 
assigned  and  transmitted  only  in  connection  with  the  goodwill 
of  the  business  concerned  in  such  particular  goods  or  classes  of 
goods,  and  shall  be  determinable  with  such  goodwill  but  subject 
as  aforesaid  the  registration  of  a  trade  mark  shall  be  deemed 
to  be  public  use  of  such  mark. 

Title  of  first  proprietor  of  a  trade  mark 

5.  The  registration  of  a  person  as  first  proprietor  of  a 
trade  mark  shall  be  prima  facie  evidence  of  his  right  to  the  ex- 
clusive use  of  such  trade  mark  and  shall  after  the  expiration 
of  five  years  from  the  date  of  such  registration  be  conclusive 
evidence  of  his  right  to  the  exclusive  use  of  such  trade  mark 
subject  to  the  provisions  of  this  Ordinance  as  to  its  connection 
with  the  goodwill  of  a  business. 

Title  of  proprietor  claiming  by  transmitted  proprietorship 

6.  Every  proprietor  registered  in  respect  of  a  trade  mark 
subsequently  to  the  first  registered  proprietor  shall  as  respects 
his  title  to  that  trade  mark  stand  in  the  same  position  as  if  his 
title  were  a  continuation  of  the  title  of  the  first  registered  pro- 
prietor. 

Rectification  of  register 

7.  If  the  name  of  any  person  who  is  not  for  the  time  being 
entitled  to  the  exclusive  use  of  a  trade  mark  is  entered  on  the 
Register  of  Trade  Marks  as  a  proprietor  of  such  trade  mark 
or  if  the  Registrar  refuses  to  enter  on  the  register  as  proprietor 


300  FIJI  ISLANDS 

of  a  trade  mark  the  name  of  any  person  who  is  for  the  time 
being  entitled  to  the  exclusive  use  of  such  trade  mark,  or  if  any 
mark  is  registered  as  a  trade  mark  which  is  not  authorised  to  be 
so  registered  under  this  Ordinance,  any  person  aggrieved  may 
apply  in  manner  hereinafter  prescribed  for  an  order  of  the 
Court  that  the  register  may  be  rectified  and  the  Court  may 
either  refuse  such  application  or  make  an  order  for  the  rectifica- 
tion of  the  register  and  award  damages  to  the  party  aggrieved. 

Procedure  where  several  claims  for  registration  of  same 

trade  mark 

8.  Where  each  of  several  persons  claims  to  be  registered 
as  the  proprietor  of  the  same  trade  mark,  the  Registrar  may 
refuse  to  comply  with  the  claims  of  any  such  person  until  their 
rights  have  been  determined  by  the  Court,  and  the  Registrar 
may  himself  submit  or  require  the  claimants  to  submit  their 
rights  to  the  Court. 

Power  of  Court  to  decide  questions  relating  to  registration  of 

trade  marks 

9.  The  Court  may  in  any  proceeding  under  the  last  two 
preceding  sections  decide  any  question  whether  a  mark  is  or  is 
not  such  a  trade  mark  as  is  authorised  to  be  registered  under 
this  Ordinance,  also  any  question  relating  to  the  right  of  any 
person  who  is  party  to  such  proceedings  to  have  his  name  en- 
tered on  the  Register  of  Trade  Marks  or  to  have  the  name  of 
some  other  person  removed  from  such  register,  also  any  other 
question  that  it  may  be  necessary  or  expedient  to  decide  for  the 
rectification  of  the  register  and  may  direct  an  issue  to  be  tried 
for  the  decision  of  any  question  of  fact  which  may  require  to 
be  decided  for  the  purposes  of  such  rectification. 

Orders  of  Court  to  be  notified  to  Registrar 

10.  Whenever  any  order  has  been  made  rectifying  the  reg- 
ister, the  Court  shall  by  its  order  direct  that  due  notice  of  such 
rectification  be  given  to  the  Registrar. 

Restrictions  on  registry  of  trade  marks 

11.  The  Registrar  shall  not,  without  the  leave  of  the  Court, 
register  in  respect  of  the  same  goods  or  classes  of  goods  a  trade 
mark  identical  with  one  already  registered  with  respect  to  such 
goods  or  classes  of  goods,  and  the  Registrar  shall  not  register 
with  respect  to  the  same  goods  or  classes  of  goods  a  trade  mark 
so  nearly  resembling  a  trade  mark  already  registered  with  re- 
spect to  such  goods  or  classes  of  goods  as  to  be  calculated  to 
deceive. 

Certain  marks  not  to  be  registered 

12.  The  Registrar  shall  not  register  as  part  of  or  in  com- 


FIJI  ISLANDS  301 

bination  with  a  trade  mark  any  words  the  exclusive  use  of  which 
would  not  by  reason  of  their  being  calculated  to  deceive  or  other- 
wise be  entitled  to  protection  in  a  Court  of  Equity  or  any  scan- 
dalous designs. 

General  rules  to  be  framed  by  Chief  Justice 

13.  The  Chief  Justice  may  from  time  to  time  make  and, 
when  made,  alter,  annul  or  vary,  as  he  may  deem  expedient, 
general  rules: 

(1)  As  to  registration  of  trade  marks; 

(2)  As  to  notices  to  be  given  by  advertisement  before  the 
registration  of  trade  marks ; 

(3)  As  to  the  classification  of  goods  for  the  purposes  of 
this  Ordinance; 

(4)  As  to  the  registration  of  first  and  subsequent  proprie- 
tor of  trade  marks; 

(5)  As  to  the  fees  to  be  charged  for  registration; 

(6)  As  to  the  continuance  of  a  trade  mark  on  the  register 
or  otherwise; 

(7)  As  to  the  removal  from  the  register  of  any  trade  mark; 

(8)  As  to  the  persons  entitled  to  inspect  the  register; 

(9)  As  to  any  proceedings  to  be  taken  to  obtain  the  judg- 
ment or  leave  of  the  Court ; 

(10)  Generally  for  the  purpose  of  carrying  into  effect  this 
Ordinance. 

Rules  to  be  approved  by  Legislative  Council 

14.  Any  rules  made  under  the  authority  of  the  last  pre- 
ceding section  shall  be  laid  before  the  Legislative  Council  and 
every  rule  when  approved  by  the  Council  shall  have  the  same 
force  and  effect  as  if  it  had  been  embodied  in  this  Ordinance. 

Definitions  of  trade  mark 

15.  For  the  purposes  of  this  Ordinance  a  trade  mark  con- 
sists of  one  or  more  of  the  following  essential  particulars  (that 
is  to  say) : 

(1)  A  name  of  an  individual  or  firm  printed,  impressed  or 
woven  in  some  particular  or  distinctive  manner;  or 

(2)  A  written  signature  or  copy  of  a  written  signature  of 
an  individual  or  firm;  or 

(3)  A  distinctive  device,  mark,  heading,  label  or  ticket,  and 
there  may  be  added  to  any  one  or  more  of  the  said  particulars 
any  letters,  words  or  figures  or  combination  of  letters,  words 
or  figures. 

Registration  of  old  trade  marks 

16.  Any  special  or  distinctive  word  or  words  or  combina- 
tion of  letters  or  figures  used  as  a  trade  mark  before  the  pass- 


302  FIJI  ISLANDS 

ing  of  this  Ordinance  may  be  registered  as  such. 

Interpretation 

17.    "Court"  means  the  Supreme  Court  of  Fiji  or  any 
Judge  thereof. 


FINLAND 

LAW  OF  FEBRUARY  11,  1889 

ABTICLE  1.  Whoever  manufactures  or  sells  products  in 
Finland  shall  have  the  right  to  acquire,  through  registration, 
in  accordance  with  the  following  provisions,  the  exclusive  right 
of  using  a  special  mark  for  the  purpose  of  distinguishing  his 
goods  in  general  business  from  those  of  other  persons. 

This  right  shall  be  applicable  to  all  kinds  of  goods,  unless 
it  shall  have  been,  upon  registration,  confined  to  certain  classes. 

The  mark  shall  be  affixed  to  the  product  itself  or  to  the  con- 
tainers or  wrappings  that  hold  it. 

ART.  2.  The  Register  of  Marks  shall  be  kept  by  the  Bureau 
of  Industry  (Industristyrelse),  which  shall  have  published  in 
the  official  journals  of  the  country  a  representation  of  the  regis- 
tered trade  mark,  as  well  as  a  notice  of  the  registration. 

The  expenses  of  registration  and  publication  shall  be  25 
marks ;  they  shall  be  paid  by  him  who  applies  for  registration. 

ART.  3.  All  applications  for  the  registration  of  marks  shall 
be  presented  in  writing  at  the  Bureau  of  Industry,  by  the  ap- 
plicant or  his  attorney.  However,  the  application  may  also  be 
sent  free  to  the  said  authorities  by  post.  The  application  shall 
contain : 

1)  Complete  statement,  with  name  and  Christian  names,  of 
the  person  or  of  the  firm  petitioning  the  deposit,  as  well  as  the 
profession,  address  and  residence  thereof; 

2)  In  case  the  applicant  only  claims  a  right  for  protection 
of  certain  goods,  statement  of  the  same. 

The  application  must  be  accompanied  by : 

Two  copies  of  the  mark  printed  upon  strong  paper,  15  cen- 
timetres in  length  by  10  in  width ; 

Two  electrotypes  of  the  same  dimensions  as  the  above  ex- 
amples and  serviceable  for  the  reproduction  of  the  mark; 

The  fee  for  registration  named  in  the  foregoing  article. 

If  the  registration  of  several  marks  is  applied  for,  com- 
plete documents  are  to  be  filed  for  each  mark. 

ART.  4.    No  mark  shall  be  registered : 

1)  If  there  has  already  been  registered  or  filed  for  deposit 
an  identical  mark  in  the  name  of  a  third  person,  or  even  if  the 
resemblance  between  the  two  marks  is  sufficient  to  produce  con- 
fusion ; 

2)  If  the  mark  consists  chiefly  or  exclusively  of  ciphers, 
characters,  letters  or  words,  unless  by  their  peculiar  form,  or 


304  FINLAND 

by  certain  arrangements  or  additions,  these  signs  constitute  a 
figurative  mark ;  or  unless  the  words  designate  the  name  or  the 
firm  of  the  applicant  or  his  property ; 

3)  If  the  mark  consists  chiefly  or  exclusively  of  a  sign  or 
emblem  generally  employed  in  a  certain  line  of  trade; 

4)  If  the  mark  contains  illegally  the  name  or  firm  of  a  third 
person,  or  even  words  that  may  be  confounded  with  them; 

5)  If  the  mark  contains  statements  that  are  offensive  to 
morals,  to  public  order,  or  scandalous,  or  if  it  is  manifestly 
susceptible  of  inducing  to  error ; 

6)  If  the  mark  contains  public  arms,  or  the  insignia  of 
orders  of  chivalry. 

ABT.  5.  The  right  to  make  use  of  a  mark  belongs  to  and 
follows  the  business  concern  for  which  it  is  used. 

If  a  business  is  assigned  to  another,  the  said  right  passes 
from  the  assignor  to  the  new  proprietor,  if  it  is  not  arranged 
that  the  former  retains  the  right  or  that  both  may  use  the  mark 
for  different  products  or  goods. 

ART.  6.  The  protection  of  a  registered  trade  mark  shall 
cease  if  the  renewal  of  the  registration  is  not  applied  for  at  the 
Bureau  of  Industry  before  the  expiration  of  ten  years  from  the 
date  of  the  registration,  and  subsequently  before  the  expiration 
of  each  tenth  year. 

Whoever  desires  to  renew  the  registration  of  a  mark  shall 
file  a  written  application  at  the  Bureau  of  Industry  as  specified 
in  Art.  3,  and  add  a  reproduction  of  the  described  mark,  as  well 
as  10  marks  as  registration  fee. 

If  the  trade  mark  was  registered  for  another  than  the  one 
applying  for  a  renewal,  the  applicant  shall  prove  his  right  to 
the  mark. 

Renewals,  if  granted,  shall  be  registered  in  the  Trade  Mark 
Register. 

ART.  7.  Whoever  claims  to  have  been  injured  by  the  regis- 
tration of  a  mark  shall  have  recourse  in  the  ordinary  courts  to 
the  end  of  obtaining  cancellation  thereof. 

ART.  8.  When  a  registration  has  been  annulled,  or  the 
term  of  protection  for  a  registered  trade  mark  has  expired,  or 
the  proprietor  of  a  registered  mark  renounces  protection,  the 
mark  shall  be  removed  from  the  Register  and  a  notice  thereof 
shall  be  published  in  the  official  journals  of  the  country. 

ART.  9.  Any  merchant  of  a  foreign  country  in  which  Fin- 
nish citizens  enjoy  corresponding  favors  may,  by  complying 
with  the  laws  in  force  in  the  Grand  Duchy,  obtain  protection  by 
registration  for  his  mark  which  he  has  duly  deposited  in  his 
country. 


FINLAND  305 

However,  this  trade  mark  will  not  be  protected  on  a  larger 
scale  nor  for  a  longer  time  than  in  the  native  country  of  the 
proprietor  of  the  mark. 

If  the  registration  of  a  foreign  mark  is  applied  for,  the 
applicant  must  furnish  the  Bureau  of  Industry,  beside  the  pieces 
for  application  denned  in  Art.  3,  and  the  prescribed  fee,  an 
authentic  certificate  establishing  that  the  applicant  has  fulfilled 
in  his  native  country  the  conditions  prescribed  for  the  obtention 
of  the  protection  of  the  trade  mark;  in  addition,  he  must  indi- 
cate the  name  of  an  attorney  residing  in  the  Grand  Duchy,  who 
will  be  able  to  represent  him  in  all  matters  relative  to  the  mark. 

ART.  10.  Whoever  illegally  and  with  fraudulent  intent 
shall  affix  to  a  product  placed  on  sale  the  mark  of  a  third  party 
protected  in  accordance  with  the  present  law,  and  whoever  puts 
on  sale  or  in  circulation  a  product  that  he  knows  to  be  fraudu- 
lently provided  with  such  a  mark,  shall  be  amenable  to  a  fine 
of  from  50  to  1,000  marks,  or  to  imprisonment  of  one  year  at 
most ;  he  shall  be  bound,  in  addition,  to  fully  indemnify  the  in- 
jured party. 

The  importation  of  all  products  bearing  a  native  mark  de- 
posited in  the  Grand  Duchy  is  prohibited,  unless  the  owner  of 
the  mark  expressly  consents  thereto. 

In  the  case  in  which  such  an  importation  shall  have  been 
made,  the  delinquent  shall  be  amenable  to  the  penalties  provided 
for  in  the  case  of  illicit  importation,  and  the  goods  thus  im- 
ported shall  be  sequestered  whether  the  owner  be  known  or  not. 

Any  mark  illegally  affixed  to  a  product  that  is  found  in  the 
possession  of  the  authority  that  has  seized  it,  or  of  the  con- 
demned party,  shall  be  effaced. 

In  case  of  impossibility  of  effacing  the  mark  the  products 
shall  be  destroyed. 

The  dispositions  of  this  article  shall  be  likewise  applicable 
in  the  case  in  which  a  product  is  provided  intentionally  with  a 
mark  having,  with  a  mark  already  deposited  in  the  name  of  a 
third  person,  a  similitude  such  that  confusion  may  easily  be 
produced. 

ART.  11.  The  present  law  implies  no  amendment  to  the 
regulations  in  force  prescribing  that  the  proprietors  of  blast 
furnaces  or  other  metallurgic  mills  are  to  announce  their  marks 
to  the  competent  authorities,  and  to  apply  them  to  their  products. 

These  marks  are  to  be  considered  as  marks  of  manufacture 
in  the  sense  of  the  present  ordinance  so  that  the  regulations 
concerning  the  deposit  of  marks  shall  be  equally  applicable  to 
this  class  of  marks. 

The  marks  mentioned  in  this  paragraph,  duly  adopted  and 


306  FINLAND 

existing  at  the  moment  of  the  entry  into  force  of  the  present 
ordinance,  shall  be,  without  any  notice  and  exempt  from  every 
fee,  recorded  in  the  Register  of  Marks  under  the  care  of  the 
Bureau  of  Industry,  with  obligation  by  this  Administration  to 
have  published  a  notice  of  the  registration  in  the  official  jour- 
nals of  the  country.  The  renewal  of  the  last-named  registration 
shall  be  made  without  special  announcement  by  the  Bureau  of 
Industry. 

ART.  12.  If  a  merchant  has  already  legally  used  a  mark 
otherwise  than  under  the  conditions  indicated  in  the  preceding 
article,  and  has  presented  it  for  registration  within  the  six 
months  that  follow  the  coming  into  force  of  the  present  law,  and 
if  an  identical  mark  has  been  presented  for  deposit  and  regis- 
tered in  the  name  of  a  third  person,  this  latter  mark  shall  be 
cancelled  through  the  medium  of  the  Bureau  of  Industry,  and 
notice  thereof  shall  be  published  in  the  official  journals. 

A  mark  enjoying  the  right  of  priority  in  conformity  with 
the  present  article  may  be  registered  such  as  it  is  for  the  same 
line  of  business,  unless  it  falls  under  the  application  of  para- 
graphs 3,  4,  5  and  6  of  Art.  4. 

ART.  13.  Every  litigation  concerning  a  domestic  mark  shall 
be  subject  to  the  jurisdiction  of  the  court  of  the  district  in  which 
the  accused  has  his  chief  business,  and,  as  regards  foreign  trade 
marks,  by  the  Court  at  Helsingf ors. 

ART.  14.  Fines  which  are  imposed  according  to  this  law 
shall  be  collected  for  the  benefit  of  the  Crown;  in  case  of  in- 
ability to  pay  the  fine  entirely,  it  will  be  changed  as  prescribed 
by  law. 

ART.  15.  Whoever  is  not  satisfied  with  the  decision  of  the 
Bureau  of  Industry  in  matters  pertaining  to  trade  marks  may 
appeal  to  the  Administrative  Department  of  the  Senate  within 
the  time  allowed  for  availing  one's  self  of  rights  against  de- 
cisions of  the  Bureau  of  Industry. 

ART.  16.  The  regulations  concerning  assay  marks  and  the 
marks  of  manufacturers  stamped  upon  products  of  gold  and 
silver,  as  well  as  stamps  of  weights  and  measures  and  playing 
cards,  shall  remain  in  force. 

ART.  17.  The  Administrative  Department  of  the  Senate 
shall  make  special  such  regulations  as  are  necessary  with  refer- 
ence to  the  registration  of  marks  and  to  the  applications  of  the 
prescriptions  of  the  present  ordinance. 

ART.  18.  This  law  is  to  become  effective  on  May  1,  1889, 
and  counting  from  this  date  the  dispositions  of  the  first  chapter, 
paragraph  11,  of  the  Handels-Balken  shall  be  abrogated,  as  well 


FINLAND  307 

as  those  of  the  law  of  March  31,  1879,  regarding  commerce  and 
industry,  which  fix  penalties  in  case  of  the  illicit  use  of  marks 
of  manufacture. 


FRANCE 

LAW  OF  JUNE  23,  1857,  AS  AMENDED  MAY  3,  1890 

TITLE  1 

RIGHT  OF  PROPERTY  IN  TRADE  MARKS 

ARTICLE  1.  The  mark  of  trade  or  of  commerce  is  dis- 
cretionary. 

However,  it  may  exceptionally  be  declared  obligatory  by 
decrees  rendered  in  the  form  of  regulations  of  public  adminis- 
tration for  products  determined  therein. 

The  following  are  to  be  considered  as  marks  of  trade  and 
of  commerce:  names  under  a  distinctive  form,  denominations, 
emblems,  imprints,  stamps,  seals,  vignettes,  reliefs,  letters, 
figures,  wrappers,  and  all  other  sign?  serving  to  distinguish  the 
products  of  a  factory  or  the  objects  of  commerce. 

ART.  2.  No  one  shall  be  entitled  to  claim  the  exclusive 
property  of  a  mark  unless  he  has  deposited  with  the  Clerk  of  the 
Tribunal  of  Commerce  of  his  domicile: 

1 )  Three  specimens  of  the  print  of  the  model  of  this  mark ; 

2)  An  electrotype  of  the  mark; 

In  case  of  the  deposit  of  several  marks  belonging  to  the 
same  person,  it  is  only  necessary  to  make  out  one  official  report 
(proces-verbal),  but  there  must  be  filed  as  many  specimens  of 
the  prints  in  triplicate  and  as  many  electrotypes  as  there  are 
distinct  marks. 

There  shall  be  sent  to  the  depositor  one  of  the  specimens 
deposited  provided  with  the  endorsement  of  the  Clerk,  and  bear- 
ing indication  of  the  day  and  the  hour  of  deposit. 

The  dimensions  of  the  electrotypes  must  not  exceed  12  cen- 
timetres on  a  side. 

The  electrotypes  will  be  returned  to  the  party  interested 
after  the  official  publication  of  the  marks  by  the  Department  of 
Commerce,  of  Industry,  and  of  the  Colonies. 

ART.  3.    The  deposit  shall  be  effective  for  only  fifteen  years. 

Ownership  of  the  mark  may  always  be  preserved  for  a  new 
term  of  fifteen  years,  by  means  of  a  new  deposit. 

ART.  4.  There  shall  be  collected  a  fixed  fee  of  one  franc 
for  the  drawing  up  of  the  official  report  of  deposit  of  each  mark, 
and  for  the  cost  of  issuing,  not  including  the  cost  of  stamp  and 
of  registration. 

TITLE  2 

PROVISIONS  RELATING  TO  FOREIGNERS 
ART.  5.    Foreigners  who  possess  in  France  industrial  or 


FRANCE  309 

commercial  establishments  shall  enjoy,  for  the  products  of  their 
establishments,  the  benefit  of  the  present  law  on  complying  with 
the  formalities  that  it  prescribes. 

ART.  6.  Foreigners  and  Frenchmen  whose  establishments 
are  situated  outside  of  France  shall  enjoy  equally  the  benefit  of 
the  present  law  for  the  products  of  these  establishments,  if  in 
the  countries  where  they  are  situated  diplomatic  conventions 
have  established  reciprocity  for  French  marks. 

In  this  case  the  deposit  of  foreign  marks  shall  take  place 
with  the  Clerk  of  the  Tribunal  of  Commerce  of  the  Department 
of  the  Seine. 

TITLE  3 

PENALTIES 

ART.  7.  The  following  persons  will  be  punished  by  a  fine 
of  from  fifty  to  three  thousand  francs  and  imprisonment  of  from 
three  months  to  three  years,  or  one  of  these  penalties  only : 

1)  Those  who  have  counterfeited  a  mark  or  made  use  of  a 
counterfeit  mark ; 

2)  Those  who  have  fraudulently  affixed  to  their  products 
or  objects  of  commerce  a  mark  belonging  to  another; 

3)  Those  who  have  knowingly  sold  or  offered  for  sale  one 
or  several  products  bearing  a  mark  counterfeited  or  fraudu- 
lently affixed. 

ART.  8.  The  following  persons  will  be  punished  by  a  fine 
of  from  fifty  to  two  thousand  francs  and  imprisonment  of  from 
one  month  to  one  year,  or  one  of  these  penalties  only: 

1)  Those  who,  without  counterfeiting  a  mark,  have  made  a 
fraudulent  imitation  of  it  of  a  nature  to  deceive  the  purchaser, 
or  have  made  use  of  a  mark  fraudulently  imitated ; 

2)  Those  who  have  made  use  of  a  mark  bearing  indica- 
tions calculated  to  deceive  the  purchaser  as  to  the  nature  of 
the  product; 

3)  Those  who  have  knowingly  sold  or  offered  for  sale  one 
or  several  products  bearing  a  mark  fraudulently  imitated  or 
bearing  indications  calculated  to  deceive  the  purchaser  as  to  the 
nature  of  the  product. 

ART.  9.  The  following  persons  will  be  punished  by  a  fine 
of  from  fifty  to  one  thousand  francs  and  imprisonment  of  from 
fifteen  days  to  six  months,  or  one  of  the  penalties  only : 

1)  Those  who  have  not  affixed  to  their  products  a  mark  de- 
clared obligatory; 

2)  Those  who  have  sold  or  offered  for  sale  one  or  several 
products  not  bearing  the  mark  declared  obligatory  for  that 
species  of  products ; 


310  FEANCE 

3)  Those  who  have  contravened  the  provisions  of  decrees 
rendered  in  execution  of  Art.  1  of  the  present  law. 

ART.  10.  The  penalties  established  by  the  present  law 
may  not  be  accumulated. 

The  severest  penalty  alone  is  to  be  inflicted  for  all  deeds 
prior  to  the  first  act  of  prosecution. 

ART.  11.  The  penalties  provided  for  in  Arts.  7,  8  and  9 
may  be  doubled  in  case  of  renewal  of  the  offense. 

There  is  a  renewal  of  the  offense  whenever  there  has  been 
pronounced  against  the  accused  within  the  preceding  five  years 
a  sentence  for  an  offense  provided  for  by  the  present  law. 

ART.  12.  Art.  463  of  the  Penal  Code  may  be  applied  to 
offenses  provided  for  by  the  present  law. 

ART.  13.  The  offenders  may,  moreover,  be  deprived  of  the 
right  to  participate  in  the  elections  of  Tribunals  and  of  Cham- 
bers of  Commerce,  of  Consulting  Chambers  of  Arts  and  Manu- 
facturers, and  of  Councils  of  Prud'hommes  during  a  time  that 
shall  not  exceed  ten  years. 

.  The  Tribunal  may  order  the  posting  of  the  judgment  in 
places  that  it  may  determine  and  its  insertion  integrally  or  in 
extract  in  journals  that  it  may  designate,  all  at  the  cost  of  the 
offender. 

ART.  14.  The  confiscation  of  products  the  mark  of  which 
shall  be  found  contrary  to  the  provisions  of  Arts.  7  and  8,  may, 
even  in  the  case  of  acquittal,  be  pronounced  by  the  Tribunal,  as 
well  as  that  of  instruments  and  utensils  that  have  especially 
served  to  commit  the  offense. 

The  Tribunal  may  order  that  the  confiscated  products  be 
turned  over  to  the  proprietor  of  the  mark  counterfeited  or 
fraudulently  affixed  or  imitated,  independently  of  more  ample 
damages,  if  there  be  such. 

In  every  case  it  shall  order  the  destruction  of  the  marks 
found  to  be  contrary  to  the  provisions  of  Arts.  7  and  8. 

ART.  15.  In  the  case  provided  for  by  the  first  two  para- 
graphs of  Art.  9,  the  Tribunal  will  always  prescribe  that  the 
marking  declared  obligatory  be  affixed  upon  the  products  that 
are  subject  to  them. 

The  Tribunal  may  pronounce  tho  confiscation  of  products 
if  the  accused  has  incurred,  within  the  previous  five  years,  a 
sentence  for  one  of  the  offenses  foreseen  in  the  first  two  para- 
graphs of  Art.  9. 

TITLE  4 
JURISDICTION 

ART.  16.  Civil  actions  relative  to  marks  shall  be  brought 
before  the  Civil  Tribunals  and  judged  as  summary  matters. 


FRANCE  311 

In  case  of  action  commenced  criminally,  if  the  accused 
raises  for  his  defense  questions  relative  to  the  ownership  of 
the  mark,  the  Police  Court  shall  rule  on  the  exception. 

ART.  17.  The  proprietor  of  a  mark  may  make,  proceeding 
through  any  marshal,  a  detailed  description,  with  or  without 
seizure,  of  the  products  that  he  alleges  to  be  marked  to  his  preju- 
dice in  contravention  of  the  provisions  of  the  present  law,  by 
virtue  of  an  ordinance  of  the  President  of  the  Civil  Tribunal 
of  First  Instance  or  of  the  Justice  of  the  Peace  of  the  Canton, 
in  default  of  a  tribunal,  in  the  place  where  are  found  the  prod- 
ucts to  be  described  or  seized. 

The  order  shall  be  granted  on  simple  petition  and  on  presen- 
tation of  the  official  report  proving  the  deposit  of  the  mark.  It 
shall  contain,  should  there  be  occasion,  the  nomination  of  an 
expert  in  order  to  aid  the  marshal  in  his  description. 

When  seizure  is  petitioned  the  judge  may  require  from  the 
petitioner  security  which  he  is  bound  to  deposit  before  proceed- 
ing to  make  the  seizure. 

Copy  of  the  order  and  of  the  act  proving  the  deposit  of  the 
security,  if  such  be  the  case,  shall  be  left  with  the  holders  of 
the  objects  described  or  seized ;  all  this  under  penalty  of  nullity 
and  of  indemnity  against  the  marshal. 

ART.  18.  In  default  of  action  by  the  petitioner,  either 
civilly  or  criminally,  within  a  delay  of  fifteen  days,  in  addition 
to  one  day  for  every  five  myriametres  of  distance  between  the 
place  where  the  objects  described  or  seized  are  found  and  the 
domicile  of  the  party  against  whom  the  action  is  to  be  brought, 
the  description  or  seizure  shall  be  null  at  law,  without  prejudice 
to  the  damages  that  may  be  claimed,  if  there  be  such. 

TITLE  5 

GENERAL  AND  TRANSITORY  PROVISIONS 

ART.  19.  All  foreign  products  bearing  either  the  mark  or 
the  name  of  a  manufacturer  resident  in  France,  or  the  indication 
of  the  name  or  of  the  place  of  a  French  factory,  shall  be  denied 
entry  and  excluded  from  transit  and  from  storage,  and  may  be 
seized  at  any  place  whatever,  either  at  the  suit  of  the  Customs 
authorities,  or  on  the  request  of  the  Public  Ministry,  or  of  the 
injured  party. 

In  the  case  where  seizure  is  made  at  the  suit  of  the  Customs 
authorities,  the  official  report  of  seizure  shall  be  immediately 
addressed  to  the  Public  Ministry. 

The  delay  within  which  the  action  provided  for  by  Art.  18 
must  be  instituted  under  penalty  of  nullity  of  the  seizure,  either 
by  the  injured  party  or  by  the  Public  Ministry,  shall  be  ex- 


312  FRANCE 

tended  to  two  months. 

The  provisions  of  Art.  14  are  applicable  to  products  seized 
by  virtue  of  the  present  article. 

ART.  20.  All  the  provisions  of  the  present  law  shall  be 
applicable  to  wines,  brandies,  and  other  drinks,  to  cattle,  grains, 
flour,  and  generally  to  all  products  of  agriculture. 

ART.  21.  Every  deposit  of  a  mark  made  with  the  Clerk 
of  the  Tribunal  of  Commerce  previous  to  the  present  law  shall 
have  effect  for  fifteen  years,  counting  from  the  time  when  said 
law  shall  become  operative. 

ART.  22.  The  present  law  shall  only  become  operative  six 
months  after  its  promulgation.  Regulations  of  the  Public  Ad- 
ministration shall  determine  the  formalities  required  for  the 
deposit  and  the  publicity  of  marks,  and  all  the  other  measures 
necessary  for  the  execution  of  the  law. 

ART.  23.  This  is  not  derogatory  to  such  previous  enact- 
ments as  are  not  contrary  to  the  present  law. 

Deliberated  in  public  session  at  Paris,  May  12,  1857. 


LAW  OF  JUNE  26,  1920 

ARTICLE  1.  The  deposit  or  the  renewal  of  the  deposit  of  a 
mark  of  manufacture  or  of  commerce  shall  necessitate  the  pay- 
ment: 

1)  Of  a  fixed  filing  fee  of  25  francs,  collected  to  the  profit 
of  the  State. 

2)  Of  a  registration  fee  of  10  francs  per  Class  for  the  goods 
upon  which  the  mark  is  to  be  affixed,  collected  to  the  profit  of 
the  National  Office  of  Industrial  Property,  without  the  total 
amount  to  be  paid  in  on  this  head  being  possible  of  exceeding 
the  sum  of  100  francs. 

There  must  be  delivered  to  the  Clerk  of  the  Tribunal  of 
Commerce  in  which  the  deposit  or  renewal  of  the  mark  is 
effected : 

1)  A  notice  containing  the  enumeration  of  the  goods  or 
classes  of  goods  for  which  the  mark  is  to  be  employed. 

2)  In  addition  to  the  three  facsimiles  of  the  mark  required 
by  Art.  2  of  the  Law  of  June  23,  1857,  modified  by  the  Law  of 
May  3,  1890,  a  number  of  facsimiles  of  the  mark  equal  to  that 
of  the  Classes  or  Categories  of  goods  on  which  the  mark  is  to  be 
affixed. 

3)  On  pain  of  refusal  of  the  deposit,  the  papers  in  verifica- 
tion of  the  payment  of  the  above  noted  taxes. 

ART.  2.  No  transfer  of  property,  no  assignment  or  conces- 
sion of  the  right  of  exploitation  or  of  pledge,  relative  to  a  mark 


FRANCE  313 

deposited,  shall  be  valid  as  regards  third  parties  except  after 
having  been  recorded  in  the  special  Register  of  Marks  of  Manu- 
facture or  of  Commerce  kept  at  the  National  Office  of  Industrial 
Property,  and  in  which  are  mentioned  the  names  and  addresses 
of  the  depositors,  assignees,  or  licencees  of  marks,  as  well  as 
all  indications  and  notifications  relative  to  acts  affecting  the 
ownership  of  marks. 

Every  inscription  concerning  the  transfer  of  property,  the 
assignment  or  concession  of  a  right  of  exploitation  or  of  pledge 
concerning  a  mark  deposited  shall  necessitate  the  collection  of 
a  tax  of  10  francs,  to  the  profit  of  the  State,  and  of  a  tax  of  3 
francs  per  Class  of  goods  for  which  the  mark  is  applicable,  to 
the  profit  of  the  National  Office  of  Industrial  Property.  For 
entry  of  transfer  by  succession,  the  fee  shall  be  10  francs,  what- 
ever be  the  number  of  marks  included  in  the  declaration.  Every 
other  inscription  and  every  cancellation  effected  upon  the  Regis- 
ter of  Marks  shall  be  subject  to  the  collection  of  a  fee  of  three 
francs  per  mark,  to  the  profit  of  the  National  Office  of  Industrial 
Property. 

The  National  Office  shall  be  bound  to  deliver  to  all  those 
that  so  request,  on  the  payment  to  its  profit  of  a  special  fee,  a 
copy  of  the  registrations  entered  upon  the  precited  Register, 
as  also  of  inscriptions  existing  as  to  marks  given  in  pledge,  or  a 
certificate  certifying  that  such  do  not  exist. 

ART.  6.  Decrees  rendered  at  the  instance  of  the  Minister 
of  Commerce  and  of  the  Minister  of  Finances  shall  determine 
the  measures  necessary  for  the  application  of  the  present  law. 

The  present  law,  deliberated  and  adopted  by  the  Senate  and 
by  the  Chamber  of  Deputies,  shall  be  carried  out  as  a  law  of 
the  State. 


GAMBIA 

ORDINANCE  OF  AUGUST  31,  1916 

Short  Title 

1.  This  Ordinance  may  be  cited  as  the  Trade  Marks  Ordi- 
nance, 1916. 

DEFINITIONS 
Interpretation 

2.  For  the  purposes  of  this  Ordinance,  unless  the  context 
otherwise  requires: — 

"Person"  shall  include  a  body  corporate. 

A  "Mark"  shall  include  a  device,  brand,  heading,  label, 
ticket,  name,  signature,  word,  letter,  numeral,  or  any  combina- 
tion thereof. 

A  "Trade  Mark"  shall  mean  a  mark  used  or  proposed  to 
be  used  upon,  or  in  connection  with,  goods  for  the  purposes  of 
indicating  that  they  are  the  goods  of  the  proprietor  of  such 
trade  mark  by  virtue  of  manufacture,  selection,  certification, 
dealing  with,  or  offering  for  sale. 

A  "Registrable  Trade  Mark"  shall  mean  a  trade  mark 
which  is  capable  of  registration  under  the  provisions  of  this 
Ordinance. 

A  "Registered  Trade  Mark"  shall  mean  a  trade  mark 
which  is  actually  on  the  register. 

"Prescribed"  shall  mean,  in  relation  to  proceedings  before 
the  Court,  prescribed  by  Rules  of  Court;  and,  in  other  cases, 
prescribed  by  this  Ordinance  or  any  rules  made  thereunder. 

"Registrar"  shall  mean  the  Colonial  Registrar. 

"Court"  shall  mean  the  Supreme  Court  of  the  Colony. 

"Goods"  shall  mean  anything  which  is  the  subject  of  trade, 
manufacture,  or  merchandise. 

"Colony"  shall  include  Protectorate. 

REGISTER  OF  TRADE  MARKS 

3.  There  shall  be  kept  at  the  Registrar's  office  a  book 
called  the  Register  of  Trade  Marks,  wherein  shall  be  entered 
all  registered  trade  marks  with  the  names  and  addresses  of  their 
proprietors,  the  dates  on  which  applications  were  made  for  their 
registration,  as  hereinafter  provided,  notifications  of  assign- 
ments, and  of  transmissions  of  trade  marks,  and  such  other 
matter  as  may  be  from  time  to  time  prescribed. 

No  Trust  to  be  Entered  on  Register 

4.  There  shall  not  be  entered  in  the  register  kept  under 


GAMBIA  315 

this  Ordinance,  any  notice  of  any  trust  expressed,  implied  or 
constructive,  nor  shall  any  such  notice  be  receivable  by  the 
Eegistrar. 

Incorporation  of  Existing  Register  and  Classification 

5.  The  register  of  trade  marks  existing  at  the  date  of  the 
commencement  of  this  Ordinance  shall  be  incorporated  with 
and  form  part  of  the  register.     Subject  to  the  provisions  of 
sections  41  and  46  of  this  Ordinance  the  validity  of  the  original 
entry  of  any  trade  mark  upon  the  registers  so  incorporated 
shall  be  determined  in  accordance  with  the  Ordinances  in  force 
at  the  date  of  such  entry,  and  such  trade  mark  shall  retain  its 
original  date,  but  for  all  other  purposes  it  shall  be  deemed  to 
be  a  trade  mark  registered  under  this  Ordinance. 

All  trade  marks  registered  under  the  classification  of  goods 
as  provided  in  the  Second  Schedule  to  the  rules  made  by  the 
Governor-in-Council  in  pursuance  of  section  40  of  the  Trade 
Marks  (Kegistration)  Ordinance,  1900,  and  dated  April  26th, 
1901,  shall  be  deemed  to  be  registered  under  the  corresponding 
classification  of  goods  as  provided  in  Part  3  of  the  Schedule 
to  this  Ordinance. 

Saving  for  Marks  Already  Registered  Under  Ordinance  No.  6 

of  1900 — Transfer  to  Register  Created 

Under  This  Ordinance 

6.  (1)  Nothing  herein  contained  shall  affect  the  validity 
of  any  act  done  or  any  right  or  obligation  acquired  or  incurred 
under  or  by  virtue  of  the  provisions  of  the  Trade  Marks  (Reg- 
istration)  Ordinance,  1900,  or  of  any  rules  made  thereunder. 

(2)  All  trade  marks  duly  registered  under  the  said  Trade 
Marks  (Kegistration)  Ordinance,  1900,  shall,  three  months  be- 
fore the  expiration  of  the  first  period  of  registration,  be  trans- 
ferred to  the  register  kept  under  the  provisions  of  this  Ordi- 
nance, and  shall  thereupon  be  subject  to  the  provisions  of  this 
Ordinance  in  all  respects  as  though  they  had  been  originally 
registered  thereunder. 
Inspection  of  Register  and  Granting  of  Certified  Copies 

7.  The  register  kept  under  this  Ordinance  shall  at  all  con- 
venient times  be  open  to  the  inspection  of  the  public,  subject  to 
the  provisions  of  this  Ordinance  and  to  such  regulations  as  may 
be  prescribed;  and  certified  copies  of  any  entry  in  any  such 
register  shall  be  given  to  any  persons  requiring  the  same,  on 
payment  of  the  prescribed  fee. 

BEQISTBABLE  TKADE  MARKS 

8.  A  registrable  trade  mark  must  contain  or  consist  of 
at  least  one  of  the  following  essential  particulars : — 


316  GAMBIA 

(1)  The  name  of  a  company,  individual  or  firm  represented 
in  a  special  or  particular  manner; 

(2)  The  signature  of  the  applicant  for  registration  or  some 
predecessor  in  his  business ; 

(3)  An  invented  word  or  invented  words; 

(4)  A  word  or  words  having  no  direct  reference  to  the 
character  or  quality  of  the  goods  and  not  being  according  to 
its  ordinary  signification  a  geographical  name  or  a  surname; 

Any  other  distinctive  mark,  but  a  name,  signature,  or  word 
or  words,  other  than  such  as  fall  within  the  description  in  the 
above  paragraphs  (1),  (2),  (3),  and  (4),  shall  not,  except  by 
order  of  the  Court,  be  deemed  a  distinctive  mark. 

For  the  purposes  of  this  section  "  distinctive "  shall  mean 
adapted  to  distinguish  the  goods  of  the  proprietor  of  the  trade 
mark  from  those  of  other  persons. 

In  determining  whether  a  trade  mark  is  so  adapted  the 
Court  may,  in  the  case  of  a  trade  mark  in  actual  use,  take  into 
consideration  the  extent  to  which  such  user  has  rendered  such 
trade  mark  in  fact  distinctive  for  the  goods  with  respect  to 
which  it  is  registered  or  proposed  to  be  registered: 

Provided  always  that  any  mark  which  has  been  registered 
as  a  distinctive  mark  in  England  under  the  Act  of  the  Imperial 
Parliament  shortly  entitled  the  Trade  Marks  Act,  1905,  shall 
be  deemed  to  be  a  distinctive  mark  for  the  purpose  of  this 
Ordinance. 

Connection  of  Trade  Mark  With  Goods 

9.  A  trade  mark  must  be  registered  for  particular  goods 
or  classes  of  goods.    The  applicant  shall  in  his  application  state 
goods  included  in  one  class  only.    If  the  applicant  desires  to 
register  the  same  mark  for  goods  falling  in  more  than  one  class, 
he  shall  make  a  separate  application  in  respect  of  each  class, 
and  each  of  such  applications  shall  be  treated  for  all  purposes 
as  separate  and  distinct  applications,  and  the  entries  on  the 
register  in  pursuance  of  such  applications  shall  for  all  purposes 
be  deemed  to  relate  to  separate  and  distinct  trade  marks. 

Coloured  Trade  Marks 

10.  A  trade  mark  may  be  limited  in  whole  or  in  part  to 
one  or  more  specified  colours,  and  in  such  ca.se  the  fact  that  it 
is  so  limited  shall  be  taken  into  consideration  by  any  tribunal 
having  to  decide  on  the  distinctive  character  of  such  trade  mark. 
If,  and  so  far  as,  a  trade  mark  is  registered  without  limitation 
of  colour  it  shall  be  deemed  to  be  registered  for  all  colours. 

Further  Restriction  on  Registration 

11.  (1)  It  shall  not  be  lawful  to  register  as  a  trade  mark 


GAMBIA  317 

or  part  of  a  trade  mark  any  matter,  the  use  of  which  would, 
by  reason  of  its  being  calculated  to  deceive  or  otherwise,  be 
disentitled  to  protection  in  a  Court  of  Justice,  or  would  be  con- 
trary to  law  or  morality,  or  any  scandalous  design. 

(2)  No  trade  mark  shall  be  registered  for  any  goods  set 
forth  and  included  in  classes  23,  24  and  25*  of  Part  3  of  the 
Schedule  hereto,  unless  such  trade  mark  has  been  and  is  regis- 
tered in  the  United  Kingdom  in  respect  of  such  goods. 

REGISTRATION  OF  TRADE  MARKS 

Application  for  Registration 

12.  (1)  Any  person  claiming  to  be  the  proprietor  of  a 
trade  mark  may  by  himself  or  his  agent  apply  to  the  Registrar 
for  the  registration  thereof. 

(2)  The  application  must  be  made  in  the  prescribed  form, 
and  must  be  accompanied  by  not  less  than  three  representations 
of  the  trade  mark  and  by  a  stereotype  block  of  such  repre- 
sentation. 

(3)  The   applicant   must   state   the   particular   goods   or 
classes  of  goods  in  connection  with  which  he  desires  his  trade 
mark  to  be  registered. 

(4)  The  application  must  be  left  with,  or  sent  by  post  to, 
the  Registrar. 

(5)  The  date  of  the  delivery  or  receipt  of  the  application 
shall  be  endorsed  thereon  and  recorded  in  the  Registrar's  Office. 

(6)  When  an  applicant  for  the  registration  of  a  trade  mark 
is  out  of  the  Colony  at  the  time  of  making  the  application  he 
shall  give  the  Registrar  an  address  for  service  in  the  Colony, 
and  if  he  fails  to  do  so  the  Registrar  may  refuse  to  proceed 
with  the  application  until  the  address  has  been  given. 

Action  in  Regard  to  Application 

13.  (1)  Subject  to  the  provisions  of  this  Ordinance  the 
Registrar  may  refuse  such  application  as  aforesaid,  or  may 
accept  it  absolutely  or  subject  to  conditions,  amendments  or 
modification. 

(2)  In  case  of  any  such  refusal  or  conditional  acceptance 
the  Registrar  shall,  if  required  by  the  applicant,  state  in  writ- 
ing the  grounds  of  his  decision  and  the  materials  used  by  him 
in  arriving  at  the  same,  and  such  decision  shall  be  subject  to 
appeal  to  the  Court. 

(3)  An  appeal  under  this  section  shall  be  made  in  the 
prescribed  manner,  and  on   such  appeal  the  Court  shall,  if 
required,  hear  the  applicant  and  the  Registrar,  and  shall  make 
an  order  determining  whether,  and  subject  to  what  conditions, 

*Cf.  23.   (a)  Cotton  yarn;   (b)  Sewing  cotton. 
Cl.  24.  Cotton  piece  goods  of  all  kinds. 
Cl.  25.  Cotton  goods  not  included  in  other  classes. 


318  GAMBIA 

amendments  or  modifications,  if  any,  the  application  is  to  be 
accepted. 

Disclaimer 

14.  If  a  trade  mark  contains  parts  not  separately  regis- 
tered by  the  proprietor  as  trade  marks,  or  if  it  contains  matter 
common  to  the  trade  or  otherwise  of  a  non-distinctive  charac- 
ter, the  Registrar  or  the  Court  in  deciding  whether  such  trade 
mark  shall  be  entered  or  shall  remain  upon  the  register,  may 
require,  as  a  condition  of  its  being  upon  the  register,  that  the 
proprietor  shall  disclaim  any  right  to  the  exclusive  use  of  any 
part  or  parts  of  such  trade  mark,  or  all  or  any  portion  of  such 
matter,  to  the  exclusive  use  of  which  they  hold  him  not  to  be 
entitled,  or  that  he  shall  make  such  other  disclaimer  as  they 
may  consider  needful  for  the  purpose  of  denning  his  rights 
under  such  registration:  Provided  always  that  no  disclaimer 
upon  the  register  shall  affect  any  rights  of  the  proprietor  of  a 
trade  mark  except  such  as  arise  out  of  the  registration  of  the 
trade  mark  in  respect  of  which  the  disclaimer  is  made. 

Advertisement  of  Application 

15.  Every  application  for  registration  of  a  trade  mark 
under  this  Ordinance,  and  a  representation  of  such  mark,  shall, 
as  soon  as  may  be  after  its  receipt,  be  advertised  by  the  Regis- 
trar in  the  Gazette  unless  the  Registrar  refuses  to  entertain  the 
application. 

Opposition  to  Registration 

16.  (1)  Any  person  may,  within  three  months  or  such 
further  time,  not  exceeding  nine  months  in  all,  as  the  Regis- 
trar may  allow,  of  the  advertisement  of  the  application,  give 
notice  to  the  Registrar  of  opposition  to  such  registration. 

(2)  Such  notice  shall  be  given  in  writing  and  in  duplicate, 
and  shall  include  a  statement  of  the  grounds  of  opposition. 

(3)  The  Registrar  shall  send  a  copy  of  such  notice  to  the 
applicant,  and  within  one  month  after  the  receipt  of  such  notice, 
or  such  further  time,  not  exceeding  three  months  in  all,  as  the 
Registrar  may  allow,  the  applicant  shall  send  to  the  Registrar  a 
counter-statement  in  duplicate  of  the  grounds  on  which  he  relies 
for  his  application,  and  if  he  does  not  do  so,  he  shall  be  deemed 
to  have  abandoned  his  application. 

(4)  If  the  applicant  send  such  counter- statement  the  Reg- 
istrar shall  furnish  a  copy  thereof  to  the  person  giving  notice 
of  opposition,  and  shall  require  him  to  give  security  in  such 
manner  and  to  such  amount  as  the  Registrar  may  require  for 
such  costs  as  may  be  awarded  in  respect  of  such  opposition, 
and  if  such  security  is  not  given  within  fourteen  days  after  such 
requirement  was  made  or  such  further  time  as  the  Registrar 


GAMBIA  319 

may  allow,  the  opposition  shall  be  deemed  to  be  withdrawn. 

(5)  If  the  person  who  gave  notice  of  opposition  duly  gives 
such  security  as  aforesaid,  the  Registrar  shall  inform  the  appli- 
cant thereof  in  writing,  and  thereafter  the  case  shall  be  deemed 
to  stand  for  the  determination  of  the  Court. 

(6)  If  the  applicant  abandons  his  application  after  notice 
of  opposition  in  pursuance  of  this  section,  he  shall  be  liable  to 
pay  to  the  opponent  such  costs  in  respect  of  the  opposition  as 
the  Registrar  may  determine  to  be  reasonable. 

(7)  Where  the  opponent  is  out  of  the  Colony  he  shall,  with 
the  notice  of  opposition  to  registration,  give  the  Registrar  an 
address  for  service  in  the  Colony. 

Cases,  How  Brought  Before  the  Court 

17.  (1)  When  a  case  stands  for  the  determination  of  the 
Court  under  the  provisions  of  the  last  preceding  section,  the 
Registrar  shall  require  the  applicant  to  make  a  written  applica- 
tion to  the  Court  for  an  order  that,  notwithstanding  the  opposi- 
tion of  which  notice  has  been  given,  the  registration  of  the 
trade  mark  be  proceeded  with  by  the  Registrar,  or  to  take  such 
other  proceedings  as  may  be  proper  and  necessary  for  the  deter- 
mination of  the  case  by  the  Court. 

(2)  The  applicant  shall  thereupon  make  his  application  or 
take  such  other  proceedings  as  aforesaid,  within  the  period  of 
one  month  or  such  further  time  as  the  Registrar  may  allow, 
and  shall  also  within  the  like  period  give  notice  thereof  to  the 
Registrar. 

(3)  If  the  applicant  shall  fail  to  make  such  application  or 
to  take  such  other  proceedings,  of  which  failure  the  non-receipt 
by  the  Registrar  of  the  said  notice  shall  be  sufficient  proof,  the 
applicant  shall  be  deemed  to  have  abandoned  his  application. 

Costs 

18.  The  Court  shall  have  power  in  proceedings  under  the 
last  two  preceding  sections  of  this  Ordinance  to  award  to  any 
party  such  costs  as  it  may  consider  reasonable,  and  to  direct 
how,  and  by  what  parties,  they  are  to  be  paid. 

Date  of  Registration 

19.  When  an  application  for  registration  of  a  trade  mark 
has  been  accepted  and  has  not  been  opposed,  and  the  time  for 
notice  of  opposition  has  expired,  or  having  been  opposed  the 
opposition  has  been  decided  in  favour  of  the  applicant,  the 
Registrar  shall,  unless  the  Court  otherwise  direct,  register  the 
said  trade  mark,  and  the  trade  mark,  when  registered,  shall  be 
registered  as  of  the  date  of  the  application  for  registration, 
and  such  date  shall  be  deemed  for  the  purposes  of  this  Ordi- 


320  GAMBIA 

nance  to  be  the  date  of  registration. 

Certificate  of  registration 

20.  The  Registrar  shall  have  a  seal  and  on  the  registration 
of  a  trade  mark  the  Registrar  shall  issue  to  the  applicant  a  cer- 
tificate in  the  prescribed  form  of  the  registration  of  such  trade 
mark  under  the  hand  and  seal  of  the  Registrar. 

Advertisement  of  Application 

21.  When  an  application  for  registration  of  a  trade  mark 
has  been  accepted,  whether  absolutely  or  subject  to  conditions, 
the  Registrar  shall,  as  soon  as  may  be  after  such  acceptance, 
cause  the  application  as  accepted  to  be  advertised  in  the  Gazette. 
Such  advertisement  shall  set  forth  all  conditions  subject  to 
which  the  application  has  been  accepted. 

Limit  of  Time  for  Proceeding  with  Application 

22.  Where  the  registration  of  a  trade  mark  is  not  com- 
pleted within  twelve  months  from  the  date  of  the  application, 
by  reason  of  default  on  the  part  of  the  applicant,  the  Registrar 
may,  after  giving  notice  in  writing  of  the  non-completion  to  the 
applicant  or  to  his  agent  (if  any)  treat  the  application  as  aban- 
doned unless  it  is  completed  before  the  expiration  of  fourteen 
days  from  such  notice  or  of  such  further  time  as  the  Registrar 
may  in  special  cases  permit. 

IDENTICAL  TRADE  MARKS 

23.  Except  by  order  of  the  Court  or  in  the  case  of  trade 
marks  in  use  before  the  first  day  of  May,  one  thousand  nine 
hundred,  no  trade  mark  shall  be  registered  in  respect  of  any 
goods  or  description  of  goods  which  is  identical  with  one  belong- 
ing to  a  different  proprietor  which  is  already  on  the  register 
with  respect  to  such  goods  or  description  of  goods,  or  so  nearly 
resembling  such  trade  mark  as  to  be  calculated  to  deceive. 

Rival  Claims  to  Identical  Maries 

24.  Where  each  of  several  persons  claims  to  be  proprietor 
of  the  same  trade  marks  or  of  nearly  identical  trade  marks  in 
respect  of  the  same  goods  or  description  of  goods,  and  to  be 
registered  as  such  proprietor,  the  Registrar  may  refuse  to  reg- 
ister any  of  them  until  their  rights  have  been  determined  by 
the  Court  or  have  been  settled  by  agreement  in  a  manner 
approved  by  him.     The  manner  in  which  the  rights  of  such 
claimants  may  be  submitted  to  the  Court  shall,  unless  the  Court 
otherwise  order,  be  by  a  special  case,  which  shall  be  filed  and 
proceeded  with  in  like  manner  as  any  other  special  case  sub- 
mitted to  the  Court,  or  in  such  other  manner  as  the  Court  may 
direct.    The  special  case  may  be  agreed  to  by  the  claimants, 


GAMBIA  321 

or  if  they  differ,  may  be  settled  by  the  Registrar  on  payment 
of  the  prescribed  fee. 

Concurrent  User 

25.  In  case  of  honest  concurrent  user  or  of  other  special 
circumstances  which,  in  the  opinion  of  the  Court,  make  it  proper 
so  to  do,  the  Court  may  permit  the  registration  of  the  same 
trade  mark,  or  of  nearly  identical  trade  marks,  for  the  same 
goods  or  description  of  goods  by  more  than  one  proprietor, 
subject  to  such  conditions  and  limitations,  if  any,  as  to  mode 
or  place  of  user  or  otherwise,  as  it  may  think  it  right  to  impose. 

ASSIGNMENT 

26.  A  trade  mark  when  registered  shall  be  assigned  and 
transmitted  only  in  connection  with  the  goodwill  of  the  business 
concerned  in  the  particular  goods  or  classes  of  goods  for  which 
it  has  been  registered,  and  shall  be  determinable  with  that 
goodwill. 

Apportionment  of  Marks  on  Dissolution  of  Partnerships 

27.  In  any  case  where  from  any  cause,  whether  by  reason 
of  dissolution  of  partnership  or  otherwise,  a  person  ceases  to 
carry  one  business  and  the  goodwill  of  such  person  does  not 
pass  to  one  successor  but  is  divided,  the  Registrar  may  (sub- 
ject to  the  provisions  of  this  Ordinance  as  to  associated  trade 
marks),  on  the  application  of  the  parties  interested,  permit  an 
apportionment  of  the  registered  trade  marks  of  the  person 
among  the  persons  in  fact  continuing  the  business,  subject  to 
such  conditions  and  modifications,  if  any,  as  he  may  think  nec- 
essary in  the  public  interest.    Any  decision  of  the  Registrar 
under  this  section  shall  be  subject  to  appeal  to  the  Court. 

ASSOCIATED  TRADE  MARKS 

28.  If  application  be  made  for  the  registration  of  a  trade 
mark  so  closely  resembling  a  trade  mark  of  the  applicant 
already  on  the  register  for  the  same  goods  or  description  of 
goods  as  to  be  calculated  to  deceive  or  cause  confusion  if  used 
by  a  person  other  than  the  applicant,  the  tribunal  hearing  the 
application  may  require  as  a  condition  of  registration  that  such 
trade  marks  shall  be  entered  on  the  register  as  associated  trade 
marks. 

Combined  Trade  Marks 

29.  If  the  proprietor  of  a  trade  mark  claims  to  be  entitled 
to  the  exclusive  use  of  any  portion  of  such  trade  mark  sepa- 
rately, he  may  apply  to  register  the  same  as  separate  trade 
marks.    Each  separate  trade  mark  must  satisfy  all  the  condi- 
tions, and  shall  have  all  the  incidents  of  an  independent  trade 
mark,  except  that  when  registered,  it  and  the  trade  mark  of 


322  GAMBIA 

which  it  forms  a  part  shall  be  deemed  to  be  associated  trade 
marks  and  shall  be  entered  on  the  register  as  such,  but  the  user 
of  the  whole  trade  mark  shall  for  the  purposes  of  this  Ordi- 
nance be  deemed  to  be  also  a  user  of  such  registered  trade 
marks  belonging  to  the  same  proprietor  as  it  contains. 
Series  of  Trade  Marks 

30.  When  a  person  claiming  to  be  the  proprietor  of  several 
trade  marks  for  the  same  description  of  goods  which,  while 
resembling  each  other  in  the  material  particulars  thereof,  yet 
differ  in  respect  of: — 

(a)  Statements  of  the  goods  for  which  they  are  respec- 
tively used  or  proposed  to  be  used ;  or 

(b)  Statements  of  number,  price,  quality,  or  names  of 
places;  or 

(c)  Other  matter  of  a  non-distinctive  character  which  does 
not  substantially  affect  the  identity  of  the  trade  mark;  or 

(d)  Colour; 

seeks  to  register  such  trade  marks,  they  may  be  registered  as 
a  series  in  one  registration.  All  the  trade  marks  in  a  series  of 
trade  marks  so  registered  shall  be  deemed  to  be,  and  shall  be 
registered  as,  associated  trade  marks. 

Assignment  and  User  of  Associated  Trade  Marks 

31.  Associated  trade  marks  shall  be  assignable  or  trans- 
missible only  as  a  whole  and  not  separately,  but  they  shall  for 
all  other  purposes  be  deemed  to  have  been  registered  as  sepa- 
rate trade  marks :  Provided  that  where  under  the  provisions  of 
this  Ordinance  user  of  a  registered  trade  mark  is  required  to 
be  proved  for  any  purpose,  the  tribunal  may,  if  and  so  far  as 
it  shall  think  right,  accept  user  of  an  associated  registered  trade 
mark,  or  of  the  trade  mark  with  additions  or  alterations  not 
substantially  affecting  its  identity,  as  an  equivalent  for  such 
user. 

DURATION  AND  RENEWAL  OF  REGISTRATION 

32.  The  registration  of  a  trade  mark  shall  be  for  a  period 
of  fourteen  years,  but  may  be  renewed  from  time  to  time  in 
accordance  with  the  provisions  of  this  Ordinance. 

Renewal  of  Registration 

33.  The  Registrar  shall,  on  application  made  by  the  regis- 
tered proprietor  of  a  trade  mark  in  the  prescribed  manner  and 
within  the  prescribed  period,  renew  the  registration  of  such 
trade  mark  for  a  period  of  fourteen  years  from  the  expiration 
of  the  original  registration  or  of  the  last  renewal  of  registra- 
tion, as  the  case  may  be,  which  date  is  herein  termed  the  expira- 
tion of  the  last  registration. 


GAMBIA  323 

Procedure  on  Expiry  of  Period  of  Registration 

34.  At  the  prescribed  time  before  the  expiration  of  the  last 
registration  of  a  trade  mark  the  Registrar  shall  send  notice  in 
the  prescribed  manner  to  the  registered  proprietor  at  his  regis- 
tered address  of  the  date  at  which  the  existing  registration  will 
expire  and  the  conditions  as  to  payment  of  fees  and  otherwise 
upon  which  a  renewal  of  such  registration  may  be  obtained,  and 
if  at  the  expiration  of  the  time  prescribed  in  that  behalf  such 
conditions  have  not  been  duly  complied  with,  the  Registrar  may 
remove  such  trade  mark  from  the  register,  subject  to  such  con- 
ditions (if  any)  as  to  its  restoration  to  the  register  as  may  be 
prescribed. 

Status  of  TJnrenewed  Trade  Mark 

35.  Where  a  trade  mark  has  been  removed  from  the  reg- 
ister for  non-payment  of  the  fee  for  renewal,  such  trade  mark 
shall,  nevertheless,  for  the  purpose  of  any  application  for  regis- 
tration during  one  year  next  after  the  date  of  such  removal, 
be  deemed  to  be  a  trade  mark  which  is  already  registered,  unless 
it  is  shown  to  the  satisfaction  of  the  Registrar  that  there  has 
been  no  bond  fide  trade  user  of  such  trade  mark  during  the  two 
years  immediately  preceding  such  removal. 

CORRECTION  AND  RECTIFICATION  OF  APPLICATIONS, 
OR  OF  THE  REGISTER 

36.  The  Registrar  may,  on  request  in  writing,  accom- 
panied by  the  prescribed  fee : — 

(a)  Correct  any  clerical  error  in,  or  in  connection  with,  an 
application  for  the  registration  of  a  trade  mark,  or 

(b)  Permit  an  applicant  for  registration  of  a  trade  mark 
to  amend  his  application  by  omitting  any  particular  goods  or 
classes  of  goods  in  connection  with  which  he  has  desired  the 
trade  mark  to  be  registered. 

Correction  of  Register 

37.  The  Registrar  may,  on  request  made  in  the  prescribed 
manner  by  the  registered  proprietor  or  by  some  person  entitled 
by  law  to  act  in  his  name : — 

(1)  Correct  any  error  in  the  name  or  address  of  the  regis- 
tered proprietor  of  a  trade  mark ;  or 

(2)  Enter  any  change  in  the  name  or  address  of  the  person 
who  is  registered  as  proprietor  of  a  trade  mark;  or 

(3)  Cancel  the  entry  of  a  trade  mark  on  the  register;  or 

(4)  Strike  out  any  goods  or  classes  of  goods  from  those 
for  which  a  trade  mark  is  registered ;  or 

(5)  Enter  a  disclaimer  or  memorandum  relating  to  a  trade 
mark  which  does  not  in  any  way  extend  the  rights  given  by  the 
existing  registration  of  such  trade  mark. 


324  GAMBIA 

Any  decision  of  the  Registrar  under  this  section  shall  be 
subject  to  appeal  to  the  Court. 

Entry  in  Register  of  Assignments 

38.  Subject  to  the  provisions  of  this  Ordinance,  where  a 
person  becomes  entitled  by  assignment,  transmission,  or  other 
operation  of  the  law  to  a  registered  trade  mark,  the  Registrar 
shall,  on  request  made  in  the  prescribed  manner  and  on  proof 
of  title  to  his  satisfaction,  cause  the  name  and  address  of  such 
person  to  be  entered  as  proprietor  of  the  trade  mark  in  the  reg- 
ister of  trade  marks:  Provided  that  any  decision  of  the  Regis- 
trar under  this  section  shall  be  subject  to  appeal  to  the  Court. 

Application  to  Alter  Registered  Trade  Mark 

39.  (1)  The  registered  proprietor  of  any  registered  trade 
mark  may  apply  to  the  Registrar  for  leave  to  add  to,  or  alter, 
such  mark  in  any  manner  not  substantially  affecting  the  iden- 
tity of  the  same,  and  the  Registrar  may  refuse  or  grant  leave 
on  such  terms  as  he  may  think  fit ;  but  any  such  refusal  or  con- 
ditional permission  shall  be  subject  to  appeal  to  the  Court. 

(2)  If  leave  be  granted,  the  mark  as  altered  shall  be  adver- 
tised in  the  prescribed  manner;  and  the  Registrar  shall,  on 
payment  of  the  prescribed  fee,  cause  the  register  to  be  altered 
in  conformity  with  the  order  of  leave. 

Rectification  of  Register  by  the  Court 

40.  (1)  The  Court  may,  on  the  application  of  any  person 
aggrieved  by  the  omission  without  sufficient  cause  of  the  name 
of  any  person  or  of  any  other  particulars  from  the  register  kept 
under  this  Ordinance,  or  by  any  entry  made  without  sufficient 
cause  in  any  such  register,  or  by  any  entry  wrongfully  remain- 
ing on  the  register,  make  such  order  for  making,  expunging,  or 
varying  the  entry  as  the  Court  thinks  fit,  or  the  Court  may 
refuse  the  application,  and  in  either  case  may  make  such  order 
with  respect  to  the  costs  of  the  proceedings   as  the   Court 
thinks  fit. 

(2)  The  Court  may  in  any  proceedings  under  this  section 
decide  any  question  that  it  may  be  necessary  or  expedient  to 
decide  for  the  rectification  of  a  register,  and  may  direct  an  issue 
to  be  tried  for  the  decision  of  any  question  of  fact,  and  may 
award  damages  to  the  party  aggrieved. 

(3)  Notice  of  any  intended  application  to  the  Court  under 
this  section  shall  be  given  to  the  Registrar  by  the  applicant, 
and  the  Registrar  shall  be  entitled  to  be  heard  on  the  appli- 
cation. 

(4)  In  case  of  fraud  in  the  registration  or  transmission 
of  a  registered  trade  mark,  the  Registrar  may  himself  apply 


GAMBIA  325 

to  the  Court  under  the  provisions  of  this  section. 

(5)  If  any  order  of  the  Court  rectifying  the  register  is 
made,  the  Registrar  shall  on  proof  thereof  and  on  payment  of 
the  prescribed  fee  cause  the  register  to  be  altered  in  conformity 
with  such  order. 

Trade  Marks  Registered  Under  Previous  Enactments 

41.  No  trade  mark  which  is  upon  the  register  at  the  com- 
mencement of  this  Ordinance,  and  which  under  this  Ordinance 
is  a  registrable  trade  mark,  shall  be  removed  from  the  register 
on  the  ground  that  it  was  not  registrable  under  the  Ordinance 
in  force  at  the  date  of  its  registration.    But  nothing  in  this 
section  contained  shall  subject  any  person  to  any  liability  in 
respect  of  any  act  or  thing  done  before  the  commencement  of 
this  Ordinance  to  which  he  would  not  have  been  subject  under 
the  Ordinance  then  in  force. 

Non-User  of  Trade  Mark 

42.  A  registered  trade  mark  may,  on  the  application  to 
the  Court  of  any  person  aggrieved,  be  taken  off  the  register  in 
respect  of  any  of  the  goods  for  which  it  is  registered,  on  the 
ground  that  it  was  registered  by  the  proprietor  or  a  predecessor 
in  title  without  any  bond  fide  intention  to  use  the  same  in  con- 
nection with  such  goods  and  that  there  has  in  fact  been  no  bond 
fide  user  of  the  same  in  connection  therewith,  or  on  the  ground 
that  there  has  been  no  bond  fide  user  of  such  trade  mark  in  con- 
nection with  such  goods  during  the  five  years  immediately  pre- 
ceding the  application,  unless  in  either  case  such  non-user  is 
shown  to  be  due  to  special  circumstances  in  the  trade  and  not 
to  any  intention  not  to  use  or  to  abandon  such  trade  mark  in 
respect  of  such  goods. 

EFFECT  OF  REGISTRATION 
Poivers  of  Registered  Proprietor 

43.  Subject  to  the  provisions  of  this  Ordinance — 

(1)  The  person  for  the  time  being  entered  in  the  register 
as  proprietor  of  a  trade  mark  shall,  subject  to  any  rights 
appearing  from  such  register  to  be  vested  in  any  other  person, 
have  power  to  assign  the  same,  and  to  give  effectual  receipt  for 
any  consideration  for  such  assignment. 

(2)  Any  equities  in  respect  of  a  trade  mark  may  be  en- 
forced in  like  manner  as  in  respect  of  any  other  personal 
property. 

Rights  of  Proprietor  of  Trade  Mark 

44.  Subject  to  the  provisions  of  section  46  of  this  Ordi- 
nance and  to  any  limitations  and  conditions  entered  upon  the 
register,  the  registration  of  a  person  as  proprietor  of  a  trade 


326  GAMBIA 

mark  shall,  if  valid,  give  to  such  person  the  exclusive  right  to 
the  use  of  such  trade  mark  upon  or  in  connection  with  the  goods 
in  respect  of  which  it  is  registered :  Provided  always  that  where 
two  or  more  persons  are  registered  proprietors  of  the  same,  or 
substantially  the  same,  trade  mark  in  respect  of  the  same  goods, 
no  right  of  exclusive  user  of  such  trade  mark  shall  (except  so 
far  as  their  respective  rights  shall  have  been  denned  by  the 
Court)  be  acquired  by  any  one  of  such  persons  as  against  any 
other  by  the  registration  thereof,  but  each  of  such  persons  shall 
otherwise  have  the  same  rights  as  if  he  were  the  sole  registered 
proprietor  thereof. 

Registration  to  be  Primd  Facie  Evidence  of  Validity 

45.  In  all  legal  proceedings  relating  to  a  registered  trade 
mark   (including  applications  under  section  40  of  this  Ordi- 
nance) the  fact  that  a  person  is  registered  as  proprietor  of 
such  trade  mark  shall  be  primd  facie  evidence  of  the  validity  of 
the  original  registration  of  such  trade  mark  and  of  all  subse- 
quent assignments  and  transmissions  of  the  same. 

Registration  to  be  Conclusive  After  Seven  Years 

46.  In  all  legal  proceedings  relating  to  a  registered  trade 
mark  (including  applications  under  section  40  of  this  Ordi- 
nance) the  original  registration  of  such  trade  mark  shall,  after 
the  expiration  of  seven  years  from  the  date  of  such  original 
registration   (or  seven  years  from  the  passing  of  this  Ordi- 
nance, whichever  shall  last  happen),  be  taken  to  be  valid  in  all 
respects  unless  such  original  registration  was  obtained  by  fraud, 
or  unless  the  trade  mark  offends  against  the  provisions  of  sec- 
tion 11  of  this  Ordinance:  Provided  that  nothing  in  this  Ordi- 
nance shall  entitle  the  proprietor  of  a  registered  trade  mark  to 
interfere  with  or  restrain  the  user  by  any  person  of  a  similar 
trade  mark  upon  or  in  connection  with  goods  upon  or  in  con- 
nection with  which  such  person  has,  by  himself  or  his  predeces- 
sors in  business,  continuously  used  such  trade  mark  from  a  date 
anterior  to  the  user  of  the  first-mentioned  trade  mark  by  the 
proprietor  thereof  or  his  predecessors  in  business,  or  to  object 
(on  such  user  being  proved)  to  such  person  being  put  upon  the 
register  for  such  similar  trade  mark  in  respect  of  such  goods 
under  the  provisions  of  section  25  of  this  Ordinance. 

No  Protection  for  Unregistered  Trade  Marks 

47.  No  person  shall  be  entitled  to  institute  any  proceed- 
ings to  prevent,  or  to  recover  damages  for,  the  infringement  of 
an  unregistered  trade  mark  unless  such  trade  mark  has  been  in 
use  for  not  less  than  three  years  prior  to  the  commencement  of 
such  proceedings,  and  has  been  refused  registration  under  this 


GAMBIA  327 

Ordinance.    The  Registrar  may,  on  request,  grant  a  certificate 
that  such  registration  has  been  refused. 

Action  for  infringement 

48.  In  an  action  for  the  infringement  of  a  trade  mark,  the 
Court  trying  the  question  of  infringement  shall  admit  evidence 
of  the  usages  of  the  trade  in  respect  of  the  get-up  of  the  goods 
for  which  the  trade  mark  is  registered  and  of  any  trade  marks 
or  get-up  legitimately  used  in  connection  with  such  goods  by 
other  persons. 

No  interference  with  bond  fide  user  of  name  or  description 

of  goods 

49.  No  registration  under  this  Ordinance  shall  interfere 
with  any  bond  fide  use  by  a  person  of  his  own  name  or  place  of 
business  or  that  of  any  of  his  predecessors  in  business  or  the 
use  by  any  person  of  any  bond  fide  description  of  the  character 
or  quality  of  his  goods. 

Action  for  passing  off  goods 

50.  Nothing  in  this  Ordinance  shall  be  deemed  to  affect 
the  rights  of  action  against  any  person  for  passing  off  goods 
as  those  of  another  person  or  the  remedies  in  respect  thereof. 

LEGAL  PROCEEDINGS 
Certificates  of  validity 

51.  In  any  legal  proceeding  in  which  the  validity  of  the 
registration  of  a  registered  trade  mark  comes  into  question  and 
is  decided  in  favour  of  the  proprietor  of  such  trade  mark,  the 
Court  may  certify  the  same,  and,  if  it  so  certifies,  then  in  any 
subsequent  legal  proceeding  in  which  such  validity  comes  into 
question  the  proprietor  of  the  said  trade  mark  on  obtaining  a 
final  order  or  judgment  in  his  favour  shall  have  his  full  costs, 
charges  and  expenses  as  between  solicitor  and  client,  unless  in 
such  subsequent  proceeding  the  Court  certifies  that  he  ought 
not  to  have  the  same. 

Procedure  before  the  Court 

52.  Every  application  made  to  the  Court  under  sections 
39  and  40  hereof,  and  all  proceedings  thereunder,  shall  be  con- 
ducted in  such  manner  as  the  Court  may  direct. 

COSTS 

53.  In  all  proceedings  before  the  Court  under  this  Ordi- 
nance, the  costs  of  the  Registrar  shall  be  in  the  discretion  of  the 
Court,  but  the  Registrar  shall  not  be  ordered  to  pay  the  costs 
of  any  other  of  the  parties. 

EVIDENCE 
Certified  copies  to  be  admitted  as  evidence 

54.  Printed  or  written  copies  or  extracts  purporting  to  be 


328  GAMBIA 

certified  by  the  Registrar,  of  or  from  any  document,  register  or 
other  books  filed  or  kept  under  this  Ordinance  in  his  office  shall 
be  admitted  in  evidence  in  all  Courts  in  the  Colony,  and  in  all 
proceedings,  without  further  proof  or  production  of  the 
originals. 

Certificate  of  registration  to  be  primd  facie  evidence 

55.  A  certificate  purporting  to  be  under  the  hand  of  the 
Registrar  as  to  any  entry,  matter  or  thing  which  he  is  authorised 
by  this  Ordinance,  or  any  rules  made  thereunder,  to  make  or  do, 
shall  be  primd  facie  evidence  of  the  entry  having  been  made 
and  of  the  contents  thereof,  and  of  the  matter  or  thing  having 
been  done  or  left  undone. 

Applications  may  be  sent  by  post 

56.  (1)  Any  application,  notice  or  other  document  author- 
ised or  required  to  be  left  with,  made  or  given  to  the  Registrar 
or  to  any  other  person  under  this  Ordinance,  may  be  sent  by  a 
registered  letter  through  the  post,  and  if  so  sent  shall  be  deemed 
to  have  been  so  left,  made  or  given  respectively  at  the  time 
when  the  letter  containing  the  same  would  be  delivered  in  the 
ordinary  course  of  post. 

(2)  In  proving  such  service  or  sending  it  shall  be  sufficient 
to  prove  that  the  letter  was  properly  addressed  and  registered 
at  the  Post  Office. 

POWERS  AND  DUTIES  OF  REGISTRAR  OF  TRADE  MARKS 

57.  Where  any  discretionary  or  other  power  is  given  to 
the  Registrar  by  this  Ordinance  or  rules  made  thereunder,  he 
shall  not  exercise  that  power  adversely  to  the  applicant  for 
registration  or  the  registered  proprietor  of  the  trade  mark  in 
question  without  (if  duly  required  so  to  do  within  the  prescribed 
time)  giving  such  applicant  or  registered  proprietor  an  oppor- 
tunity of  being  heard. 

Registrar  to  consult  Legal  Adviser 

58.  The  Registrar  may,  in  any  case  of  doubt  or  difficulty 
arising  in  the  administration  of  any  of  the  provisions  of  this 
Ordinance,  apply  to  the  Legal  Adviser  for  directions  in  the 
matter. 

POWER  TO  MAKE  RULES  AS  TO  FEES,  ETC. 
Power  to  make  rules 

59.  (1)  The  Governor-in-Council  may  from  time  to  time 
make,  alter  or  revoke  rules,  prescribe  such  forms,  and  generally 
do  such  things  as  he  thinks  expedient,  subject  to  the  provisions 
of  this  Ordinance: 

(a)  For  regulating  the  practice  of  registration  under  this 
Ordinance ; 


GAMBIA  329 

(b)  For  classifying  goods  for  the  purposes  of  registration 
of  trade  marks; 

(c)  For  prescribing  the  fees  payable  in  respect  of  applica- 
tions and  registrations  and  other  matters  under  the  Ordinance, 
and  the  mode  of  payment  of  the  same; 

(d)  Generally  for  regulating  all  things  by  the  said  Ordi- 
nance placed  under  the  direction  or  control  of  the  Registrar ; 

(e)  For  altering  or  revoking  the  provisions  contained  in 
the  Schedules  hereto. 

(2)  Any  rules  made  in  pursuance  of  this  section  shall  be 
published  in  the  Gazette,  and  shall  come  into  operation  on  the 
publication  thereof,  subject  to  disallowance  by  His  Majesty. 

(3)  Unless  and  until  they  be  altered  or  revoked  under  this 
section,  the  provisions  contained  in  the  Schedule  hereto  shall 
be  and  remain  in  force. 

SPECIAL  TRADE  MARKS 
Standardisation,  &c.,  of  trade  marks 

60.  Where  any  association  or  person  undertakes  the  exam- 
ination of  any  goods  in  respect  of  origin,  material,  mode  of 
manufacture,  quality,  accuracy  or  other  characteristic,  and  cer- 
tifies the  result  of  such  examination  by  mark  used  upon  or  in 
connection  with  such  goods,  the  Registrar  may,  if  he  shall  judge 
it  to  be  to  the  public  advantage,  permit  such  association  or 
person  to  register  such  mark  as  a  trade  mark  in  respect  of  such 
goods,  whether  or  not  such  association  or  person  be  a  trading 
association  or  trader  or  possessed  of  a  goodwill  in  connection 
with  such  examination  and  certifying.    When  so  registered,  such 
trade  mark  shall  be  deemed  in  all  respects  to  be  a  registered 
trade  mark,  and  such  association  or  person  to  be  the  proprietor 
thereof,  save  that  such  trade  mark  shall  be  transmissible  or 
assignable  only  by  permission  of  the  Registrar. 

TRADE  MARKS  REGISTERED  IN  GREAT  BRITAIN 

61.  (1)  Any  person  who  has  registered  a  trade  mark  in 
Great  Britain  shall  be  entitled  to  registration  of  his  trade  mark 
under  this  Ordinance  in  priority  to  other  applicants,  and  such 
registration  shall  have  the  same  date  as  the  application  for 
registration  in  Great  Britain,  provided  that  his  application  is 
made  within  four  months  from  his  applying  for  protection  in 
Great  Britain:  Provided  that  nothing  in  this  section  contained 
shall  entitle  the  proprietor  of  the  trade  mark  to  recover  damages 
for  infringements  happening  prior  to  the  date  of  the  actual 
registration  of  his  trade  mark  in  the  Colony. 

(2)  The  use  in  the  Colony  during  the  period  aforesaid  of 
the  trade  mark  shall  not  invalidate  the  registration  of  the  trade 
mark. 


330  GAMBIA 

(3)  The  application  for  the  registration  of  a  trade  mark 
under  this  section  must  be  made  in  the  same  manner  as  an  or- 
dinary application  under  this  Ordinance:  Provided  that  any 
trade  mark,  the  registration  of  which  has  been  duly  obtained  in 
Great  Britain,  may  be  registered  under  this  Ordinance. 
Powers  of  Customs  authorities  to  detain  goods  in  certain  cases 

62.  Any  person  who  has  duly  registered  his  trade  mark  in 
respect  of  any  goods  in  Great  Britain  may  by  himself,  his  agent 
or  representative  in  the  Colony,  on  giving  notice  in  writing  to 
the  Receiver  General  or  other  proper  Officer  of  the  Customs  that 
goods  bearing  a  mark  so  nearly  resembling  his  trade  mark  as 
to  be  well  calculated  to  deceive  are  being  imported  into  the 
Colony,  cause  the  said  goods  to  be  detained  by  such  Receiver 
General  or  other  proper  Officer  of  the  Customs  until  the  rights 
of  the  matter  have  been  determined  according  to  law :  Provided 
that  any  such  informant  shall  reimburse  to  the  Receiver  General 
or  other  proper  Officer  of  the  Customs  all  expenses  and  damages 
incurred  in  respect  of  such  detention  made  on  his  information, 
and  of  any  proceedings  consequent  on  such  detention. 

Offences 

63.  (1)  If  any  person  makes  or  causes  to  be  made  a  false 
entry  in  the  register  kept  under  this  Ordinance,  or  a  writing 
falsely  purporting  to  be  a  copy  of  an  entry  in  such  register,  or 
produces  or  tenders,  or  causes  to  be  produced  or  tendered  in 
evidence  any  such  writing,  knowing  the  entry  or  writing  to  be 
false,  he  shall  be  guilty  of  an  offence,  and  on  conviction  shall 
be  liable  to  imprisonment,  with  or  without  hard  labour,  for  a 
term  not  exceeding  seven  years,  and  such  offence  shall  be  tried 
on  information. 

(2)  Any  person  who  represents  any  trade  mark  as  regis- 
tered, which  is  not  so,  shall  be  guilty  of  an  offence,  and  liable, 
on  conviction,  to  a  penalty  not  exceeding  five  pounds. 

A  person  shall  be  deemed,  for  the  purposes  of  this  section, 
to  represent  that  a  trade  mark  is  registered  if  he  uses  in  con- 
nection with  the  trade  mark  the  word  '  *  registered ' '  or  any  word 
or  words  expressing  or  implying  that  registration  has  been  ob- 
tained for  the  trade  mark. 

(3)  If  any  person,  without  the  authority  of  His  Majesty, 
uses  in  connection  with  any  trade,  business,  calling  or  profes- 
sion, the  Royal  Arms  (or  arms  so  closely  resembling  the  same 
as  to  be  calculated  to  deceive)  in  such  manner  as  to  be  calcu- 
lated to  lead  to  the  belief  that  he  is  duly  authorised  so  to  use 
the  Royal  Arms,  or  if  any  person  without  the  authority  of  His 
Majesty  or  of  a  member  of  the  Royal  Family,  uses  in  connec- 
tion with  any  trade,  business,  calling  or  profession  any  device, 


GAMBIA  331 

emblem  or  title  in  such  manner  as  to  be  calculated  to  lead  to  the 
belief  that  he  is  employed  by  or  supplies  goods  to  His  Majesty 
or  such  member  of  the  Royal  Family,  he  shall  be  guilty  of  an 
offence,  and  liable  on  conviction  to  a  penalty  not  exceeding 
twenty  pounds :  Provided  that  nothing  in  this  sub-section  shall 
be  construed  as  affecting  the  right,  if  any,  of  the  proprietor  of 
a  trade  mark  containing  any  such  arms,  device,  emblem  or  title 
to  continue  to  use  such  trade  mark. 

COTJETS 
Supreme  Court.   Jurisdiction  and  practice.  No.  4  of  1889 

64.  So  far  as  the  same  may  be  applicable,  the  provisions 
of  the  Supreme  Court  Ordinance,  1889,  and  the  practice  and  pro- 
cedure thereunder  shall  extend  and  apply  to  all  proceedings 
under  this  Ordinance. 

Offences,  how  tried 

65.  All  offences  under  this  Ordinance  (with  the  exception 
of  that  contained  in  section  63,  sub-section  (1),  shall  be  tried 
and  punishable  before  the  Police  Magistrate  or  two  Justices  of 
the  Peace. 

INTERNATIONAL  AND  INTERCOLONIAL  ARRANGEMENTS 

66.  (1)  If  His  Majesty  is  pleased  by  Order-in-Council  to 
apply  the  provisions  of  section  91  of  the  Act  of  the  Imperial 
Parliament  shortly  entitled  the  Patents  and  Designs  Act,  1907,* 
to  the  Colony,  then  any  person  who  has  applied  for  protection 
for  any  trade  mark  in  any  foreign  State  with  the  Government 
of  which  His  Majesty  has  made  an  arrangement  under  the  said 
section  for  mutual  protection  of  trade  marks  shall  be  entitled  to 
registration  of  his  trade  mark  under  this  Ordinance  in  priority 
to  other  applicants,  and  such  registration  shall  take  effect  from 
the  same  date  as  the  date  of  the  application  in  such  foreign 
State. 

(2)  Every  application  for  the  registration  of  a  trade  mark 
under  this  section  shall  be  made  within  four  months  from  the 
date  of  the  application  for  protection  in  such  foreign  State. 

(3)  Nothing  in  this  section  contained  shall  entitle  the  pro- 
prietor of  the  trade  mark  to  recover  damages  for  infringements 
happening  prior  to  the  date  of  the  actual  registration  of  his 
trade  mark  in  the  Colony. 

(4)  The  use  in  the  Colony  during  the  period  aforesaid  of 
the  trade  mark  shall  not  invalidate  the  registration  thereof. 

(5)  The  application  for  the  registration  of  a  trade  mark 
under  this  section  shall  be  made  in  the  same  manner  as  an  or- 

*  For  provisions  in  question  see  Great  Britain:  Patents  and  Designs  Act. 
1907,  Sec.  91. 


332  GAMBIA 

dinary  application  under  this  Ordinance:  Provided  that  any 
trade  mark  the  registration  of  which  has  been  duly  applied  for 
in  the  country  of  origin  may  be  registered  under  this  Ordinance. 
(6)  The  provisions  of  this  section  shall  apply  only  in  the 
case  of  those  foreign  States  with  respect  to  which  His  Majesty 
shall  from  time  to  time  by  Order-in-Council  declare  the  provi- 
sions of  the  aforesaid  section  91  of  the  Patents  and  Designs  Act, 
1907,  to  be  applicable,  and  so  long  only  in  the  case  of  each  State 
as  such  Order  continues  in  force  with  respect  to  that  State. 

Intercolonial  arrangements 

67.  (1)  Whenever  it  appears  to  the  Governor-in-Council 
that  the  legislature  of  any  British  Possession  has  made  satisfac- 
tory provision  for  the  protection  in  such  Possession  of  trade 
marks  registered  in  the  Colony,  the  Governor-in-Council  may  by 
Order  apply  all  or  any  of  the  provisions  of  the  last  preceding 
section  of  this  Ordinance  with  such  variations  or  additions  as 
may  seem  fit,  to  trade  marks  registered  in  such  British  Pos- 
session. 

(2)  An  Order-in-Council  under  this  section  shall,  from  a 
date  to  be  mentioned  in  the  Order,  take  effect  as  if  its  provisions 
had  been  contained  in  this  Ordinance,  but  the  Governor-in- 
Council  may  revoke  such  Order. 

GENERAL 
Provisions  as  to  Sundays  and  public  holidays 

68.  Whenever  the  last  day  fixed  by  this  Ordinance,  or  by 
any  rule  for  the  time  being  in  force,  for  leaving  any  document 
with,  or  paying  any  fee  to,  the  Registrar,  shall  fall  on  a  Sunday 
or  public  holiday,  it  shall  be  lawful  to  leave  such  document  or 
to  pay  such  fee  on  the  day  next  following  such  Sunday  or  public 
holiday  or  holidays,  if  two  or  more  of  them  occur  consecutively. 

Infants,  lunatics,  &c. 

69.  If  any  person  is,  by  reason  of  infancy,  lunacy,  or  other 
inability,  incapable  of  making  any  affidavit  or  doing  anything 
required  or  permitted  by  this  Ordinance  or  by  any  rules  made 
under  the  authority  of  this  Ordinance,  then  the  guardian  of  such 
incapable  person,  or  if  there  be  none,  any  person  appointed  by 
any  Court  possessing  jurisdiction  in  respect  of  the  property  of 
incapable  persons  upon  the  petition  of  any  person  on  behalf  of 
such  incapable  person,  or  any  other  person  interested  in  the 
making  of  such  affidavit  or  doing  such  thing,  may  make  such 
affidavit,  or  an  affidavit  as  nearly  corresponding  thereto  as  cir- 
cumstances may  permit,  and  do  such  thing  in  the  name  and  on 
behalf  of  such  incapable  person,  and  all  acts  done  by  such  sub- 
stitute shall,  for  the  purposes  of  this  Ordinance,  be  as  effectual 


GAMBIA  333 

as  if  done  by  the  person  for  whom  he  is  substituted. 

REPEAL 

Repeal  of  Ordinances  No.  6  of  1900  and  No.  6  of  1904 
70.    The  Trade  Marks  (Registration)  Ordinance,  1900,  and 

the  Trade  Marks  (Registration)  Amendment  Ordinance,  1904, 

are  hereby  repealed. 


GERMANY 


SECTION.  1.  Any  person  that  desires  to  employ  in  his  busi- 
ness a  merchandise  mark  to  distinguish  his  merchandise  from 
that  of  others,  may  declare  it  for  registry  in  the  Roll  of  Marks 
(Zeichen  Rolle). 

SEC.  2.  The  Boll  shall  be  kept  at  the  Patent  Office.  The 
declaration  of  a  mark  shall  be  made  in  writing  to  the  Patent 
Office.  Every  declaration  must  be  accompanied  by  a  statement 
of  the  enterprise  for  which  the  mark  is  to  be  employed  and  a 
specification  of  the  merchandise  for  which  it  is  intended,  as  well 
as  a  distinct  representation  of  the  mark  and  a  description  there- 
of so  far  as  it  may  be  necessary. 

The  Patent  Office  shall  prescribe  rules  concerning  other 
requirements  of  the  declaration. 

A  fee  of  30  marks  shall  be  paid  with  the  declaration  of  each 
mark,  and  at  each  renewal  of  the  declaration  a  fee  of  10  marks. 
If  registration  does  not  result  from  the  first  declaration,  20 
marks  of  the  fee  shall  be  refunded. 

SEC.  3.  The  Roll  of  Marks  shall  contain,  first,  the  date  of 
receipt  of  the  declaration;  second,  the  facts  to  accompany  the 
declaration  required  by  the  first  paragraph  of  section  2  of  this 
law ;  third,  the  name  and  domicile  of  the  proprietor  of  the  mark 
and  of  his  attorney,  if  any,  as  well  as  changes  in  the  person, 
the  name  or  the  domicile  of  the  proprietor  of  the  mark  or  his 
attorney;  fourth,  the  date  of  renewal  of  the  declaration;  fifth, 
the  date  of  cancellation  of  the  mark. 

The  Roll  shall  be  open  to  public  inspection. 

Every  registration  and  cancellation  will  be  officially  pub- 
lished. The  Patent  Office  will  publish  periodically  abstracts  of 
registrations  and  cancellations. 

SEC.  4.  Registration  is  to  be  refused  in  the  case  of  marks 
common  to  the  trade,  as  well  as  to  trade  marks : 

1)  That  consist  exclusively  of  figures,  letters,  or  of  such 
words  as  contain  information  as  to  the  manner,  time  and  place 
of  manufacture,  as  to  the  quality,  as  to  the  destination,  or  as 
to  the  price,  quantity  or  weights  of  the  goods. 

2)  That  contain  the  arms  of  a  State,  or  other  State  insig- 
nia, or  the  arms  of  a  domestic  town,  parish  or  other  community. 

3)  That  contain  representations  that  might  excite  annoy- 


GERMANY  335 

ance,  or  declarations  that  do  not  prima  facie  conform  to  the 
actual  facts  and  involve  the  danger  of  deception. 

The  provisions  of  No.  2  are  without  force  if  the  applicant 
is  authorized  to  place  the  insignia  or  arms  in  the  trade  mark. 

Marks  that  have  become  void  may  not  be  registered  anew 
for  the  goods  for  which  they  were  registered,  or  for  similar 
goods  on  behalf  of  some  one  other  than  the  last  proprietor, 
until  after  the  expiration  of  two  years  from  the  day  of 
expiration. 

SEC.  5.  If  the  Patent  Office  shall  deem  that  any  declared 
mark  is  in  conflict  with  one  previously  declared  for  the  same  or 
similar  merchandise  under  the  law  of  November  30,  1874,  or 
under  the  present  law,  it  shall  advise  the  owner  of  the  earlier 
mark.  If  within  a  month  he  shall  make  no  opposition  to  the 
registry  of  the  new  declared  mark,  it  may  be  registered.  In 
the  contrary  case  the  Office  shall  determine  whether  there  is  an 
actual  conflict. 

The  omission  of  the  notice  contemplated  in  the  preceding 
paragraph  shall  not  constitute  claim  for  indemnity. 

SEC.  6.  If  the  decision  (Sec.  5,  par.  1)  be  that  there  is  no 
conflict  between  the  marks,  the  new  declared  one  may  be  reg- 
istered. 

If  the  decision  be  that  conflict  exists,  registration  shall  be 
refused.  In  case  the  declarant  shall  desire  to  establish  his 
right  to  registry,  notwithstanding  the  conflict,  he  must  do  so 
by  action  against  the  opposing  party.  Registry  effected  by 
virtue  of  a  decision  in  his  favor  shall  be  effective  as  of  the  date 
of  his  original  declaration. 

SEC.  7.  Rights  resulting  from  the  declaration  or  registry  of 
a  merchandise  mark  shall  pass  by  inheritance,  and  may  be  trans- 
mitted to  other  persons  by  testamentary  disposition.  They  can- 
not however  pass  to  others  but  along  with  the  business  to  which 
the  mark  appertains.  The  transfer  shall  be  entered  in  the  Roll 
of  Marks  at  the  instance  of  the  successor,  provided  the  assent 
of  the  original  owner  is  satisfactorily  established.  If  the  orig- 
inal owner  is  deceased  the  successor  must  establish  his  title. 

The  new  owner  cannot  benefit  by  the  rights  accruing  from 
registration  until  the  transfer  has  been  recorded  in  the  Roll  of 
Marks. 

Decisions  and  judgments  of  the  Patent  Office  that  require 
to  be  notified  to  the  proprietor  of  a  mark  must  be  addressed  to 
the  proprietor  of  record.  If  he  is  deceased  the  Patent  Office 
may,  at  its  discretion,  consider  the  notice  as  given,  or  cause 
search  to  be  made  for  the  heirs,  in  order  to  notify  them. 

SEC.  8.    A  mark  can  be  cancelled  on  the  Roll  at  any  time 


336  GERMANY 

on  demand  of  the  owner. 

Cancellation  will  take  place  by  Office  action,  first,  if  ten 
years  shall  have  expired  since  the  declaration  or  renewal  of  the 
mark ;  second,  if  the  registration  shall  have  been  refused. 

When  there  is  a  question  of  cancellation  without  the  request 
of  the  owner,  the  Office  shall  give  him  notice.  If  he  does  not 
reply  within  a  month  the  mark  shall  be  cancelled.  If  he  replies 
the  question  shall  be  decided  by  the  Office.  If  such  cancellation 
is  under  consideration  by  reason  of  expiration  of  the  term  of 
ten  years,  it  shall  not  take  place,  if,  within  one  month  from  the 
notice,  the  owner  of  the  mark  shall  renew  it  by  the  payment  of 
10  marks,  in  addition  to  the  renewal  fee,  on  which  the  renewal 
shall  be  regarded  as  having  taken  place  at  the  expiration  of  the 
preceding  term. 

SEC.  9.  A  third  party  may  demand  the  cancellation  of  a 
merchandise  mark,  first,  if,  by  virtue  of  a  prior  declaration,  the 
mark  has  been  registered  in  his  name  for  the  same  or  similar 
merchandise  in  the  Roll  of  Marks  or  in  the  Registers  of  Marks 
kept  under  the  law  of  November  30,  1874 ;  second,  if  the  enter- 
prise to  which  it  appertains  has  not  been  maintained  by  the 
owner  of  record;  third,  if  facts  establish  that  the  contents  of 
the  mark  do  not  agree  with  actual  conditions,  and  are  liable 
to  mislead. 

When  a  mark,  excluded  from  registry  under  the  law  of 
November  30,  1874,  has  been  considered  in  commercial  circles 
up  to  the  enactment  of  this  law  as  the  distinctive  sign  of  the 
merchandise  of  a  particular  concern,  and  this  mark  has  been 
entered  in  the  Roll  of  Marks  in  the  name  of  another  person 
under  this  law,  the  owner  of  said  concern  shall  have  until 
October  1,  1895,  to  demand  its  cancellation.  If  the  demand  is 
granted  the  mark  may  be  registered  in  the  Roll  in  the  name  of 
the  applicant  before  the  expiration  of  the  period  fixed  by  sec- 
tion 4,  par.  2. 

The  demand  for  cancellation  is  to  be  made  in  the  form  of 
an  action  at  law  against  the  owner  of  record,  or  against  his 
heirs  if  he  is  deceased. 

If,  before  or  after  the  beginning  of  the  action,  the  mark 
has  been  assigned,  the  decision  shall  be  effectually  operative  as 
regards  the  assignee.  The  provisions  of  Sees.  63-66  and  73  of 
the  Code  of  Civil  Procedure  shall  apply  to  the  right  of  the 
assignee  to  intervene  in  the  suit.  In  the  second  case  contem- 
plated in  the  first  paragraph  of  this  section,  the  demand  of 
cancellation  may  be  addressed  in  the  first  place  to  the  Patent 


GERMANY  337 

Office,  which  shall  give  notice  thereof  to  the  person  registered 
as  proprietor.  If  he  makes  no  opposition  in  one  month  the  mark 
shall  be  cancelled.  If  he  makes  opposition,  the  applicant  may 
prosecute  his  demand  for  cancellation  by  an  action  at  law. 

SEC.  10.  Declarations,  assignments  for  record,  and  objec- 
tions to  cancellation,  shall  be  dispatched  by  a  summons  and  a 
decision,  as  in  the  procedure  concerning  patents.  In  the  case 
contemplated  in  section  5,  par.  1,  there  shall  be  no  summons. 

An  appeal  is  open  to  the  applicant  from  a  rejection  of  his 
application,  and  also  to  the  owner  of  a  mark  from  a  decree  of 
cancellation  in  the  face  of  his  protest.  These  appeals  are  to  be 
filed  in  the  Patent  Office  within  one  month  after  notification. 

Notifications  concerning  registry,  assignment,  or  cancella- 
tion of  marks  shall  be  given  by  registered  letter.  If  notification 
cannot  be  given  in  Germany,  it  shall  be  sent  by  mail  as  provided 
in  Sees.  161  and  175  of  the  Code  of  Civil  Procedure. 

SEC.  11.  The  Patent  Office  shall  give  opinions  upon  ques- 
tions concerning  registered  merchandise  marks  on  request  of 
the  courts,  when  the  inquiry  relates  to  a  legal  proceeding  in 
which  experts  differ. 

SEC.  12.  The  effect  of  registration  of  a  mark  shall  be  to 
confer  on  the  registrant  the  exclusive  right  to  affix  the  mark  to 
merchandise  of  the  kind  named  in  the  declaration,  or  to  its 
wrappers  or  containers ;  to  put  on  the  market  goods  so  marked ; 
and  to  employ  the  mark  on  advertisements,  price  lists,  business 
letters,  press  notices,  invoices,  and  analogous  matter. 

In  case  of  cancellation  no  right  shall  be  inferred  from  regis- 
tration for  the  period  during  which  the  cause  of  cancellation 
existed. 

SEC.  13.  Registration  of  a  mark  shall  not  prevent  any  per- 
son from  employing,  even  in  an  abridged  form,  on  his  goods  or 
on  their  inclosure,  his  name,  firm  name,  or  residence,  nor  indica- 
tions concerning  the  mode,  time  or  place  of  manufacture,  or  the 
quality,  destination,  price,  quantity  or  weight  of  the  goods,  nor 
from  making  use  of  similar  indications  in  trade. 

SEC.  14.  If  any  person  shall  knowingly  or  through  gross 
carelessness  illegally  apply  to  his  goods  or  their  inclosures,  or 
to  his  advertisements,  business  letters,  price  lists,  press  notices, 
invoices  and  the  like,  the  name  or  firm  name  of  another  or  a 
mark  protected  under  the  present  law,  or  shall  put  in  circula- 
tion or  on  sale  merchandise  thus  illegally  marked,  he  shall  be 
bound  to  indemnify  the  injured  party.  If  he  shall  commit  this 
act  knowingly  he  shall  be  further  punished  by  a  fine  of  from 
150  to  5000  marks,  or  imprisonment  not  exceeding  six  months. 
Penal  action  shall  proceed  only  on  complaint,  and  it  may  be 


338  GERMANY 

withdrawn. 

SEC.  15.  If  any  one  with  the  intent  to  cause  deception  in 
commerce  and  trade,  shall  without  authority  use  upon  goods, 
or  their  inclosures,  or  on  advertisements,  price  lists,  business 
letters,  press  notices,  invoices,  etc.,  a  device  considered  in  com- 
mercial circles  as  the  distinctive  sign  of  another  person's  simi- 
lar merchandise;  or  if  any  one,  with  the  same  intent,  shall  put 
in  circulation  or  offer  for  sale  goods  so  marked,  he  shall  be 
bound  to  indemnify  the  injured  party,  and  shall  be  liable  to  a 
fine  of  from  100  to  3000  marks,  or  imprisonment  not  exceeding 
three  months.  Penal  action  shall  only  take  place  on  a  complaint 
and  it  may  be  withdrawn  by  the  plaintiff. 

SEC.  16.  Any  one  who,  with  intent  to  cause  deception  as 
to  the  quality  or  value  of  goods,  shall  have  falsely  affixed  there- 
to, or  to  their  wrappers  or  containers,  or  used  in  his  adver- 
tisements, price  lists,  business  letters,  press  notices,  invoices, 
etc.,  the  Arms  of  a  State,  or  the  name  or  insignia  of  a  locality, 
community  or  more  extended  communal  union,  and  any  one 
who  with  the  same  object  shall  have  put  in  circulation  or  offered 
for  sale  goods  so  marked,  shall  be  liable  to  a  fine  of  from  150 
to  5000  marks,  or  imprisonment  not  exceeding  six  months. 

The  employment  of  names,  which,  by  the  usages  of  trade, 
serve  to  designate  certain  goods  without  indicating  their  origin, 
does  not  come  within  the  scope  of  this  provision. 

SEC.  17.  Foreign  goods  unlawfully  marked  with  the  name 
of  a  German  firm  or  place,  or  with  a  merchandise  mark  regis- 
tered in  the  Roll  of  Marks,  shall  be  liable  to  seizure  and  confis- 
cation upon  entry  into  Germany  for  importation  or  transit,  on 
the  demand  of  the  injured  party,  who  shall  give  security.  Seiz- 
ure may  be  effected  by  the  officers  of  customs  and  revenue. 
Confiscation  shall  be  adjudged  by  a  penal  decision  of  the  execu- 
tive authority  (Sec.  459,  Code  of  Penal  Procedure). 

SEC.  18.  In  lieu  of  the  damages  contemplated  in  this  law, 
on  the  demand  of  the  injured  party,  there  may  be  awarded,  in 
excess  of  the  penalty,  an  indemnity  to  be  paid  to  him  not  exceed- 
ing 10,000  marks.  Persons  condemned  to  pay  this  indemnity 
shall  be  jointly  responsible.  The  allowance  of  this  indemnity 
shall  exclude  all  other  claims  for  damages. 

SEC.  19.  In  a  condemnation  under  Sees.  14,  15,  16,  or  18, 
the  judgment  shall  order  the  illegal  mark  effaced  from  all  arti- 
cles in  the  possession  of  the  condemned.  If  it  cannot  be  other- 
wise done,  the  destruction  of  the  goods  may  be  ordered. 

In  case  of  a  penal  condemnation  there  shall  be  accorded  to 
the  injured  party  in  the  cases  contemplated  in  Sees.  14  and  15 
the  privilege  of  publishing  the  judgment  at  the  expense  of  the 


GERMANY  339 

convicted  party.  The  judgment  shall  determine  the  nature  of 
the  publication  and  the  period  within  which  it  shall  be  made. 

SEC.  20.  The  application  of  the  provisions  of  this  law 
shall  not  be  prevented  by  any  modifications  that  may  be  em- 
ployed in  the  reproduction  of  foreign  names,  firms,  marks,  arms, 
and  any  other  distinctive  signs  of  merchandise,  if,  in  spite  of 
such  modifications,  the  possibility  of  mistake  is  not  avoided. 

SEC.  21.  In  civil  suits  in  which  by  complaint  or  rejoinder 
a  claim  is  made  founded  on  the  provisions  of  this  law,  the  hear- 
ing and  final  decision  shall  be  referred  to  the  Imperial  Court 
under  Sec.  8  of  the  Introductory  Act  to  the  Judicature  law. 

SEC.  22.  Whenever  German  goods  introduced  into  a  for- 
eign country,  either  as  imported  or  in  transit,  shall  be  required 
to  be  marked  to  show  their  German  origin,  or  shall  be  treated 
less  favorably  by  customs  officers  than  the  goods  of  any  other 
country  in  respect  to  the  marks  they  are  required  to  bear,  the 
Federal  Council  is  empowered  to  impose  a  corresponding  bur- 
den upon  foreign  goods  on  importation  into  Germany  or  entered 
for  transit,  and  it  may  order  the  seizure  and  confiscation  of  the 
goods  in  case  of  contravention.  Seizure  shall  be  made  by  the 
customs  and  revenue  officers.  Confiscation  shall  be  adjudged 
by  a  penal  decision  of  the  executive  authorities  (Sec.  459,  Code 
of  Penal  Procedure). 

SEC.  23.  A  person  not  having  an  establishment  in  Ger- 
many may  have  a  claim  to  the  protection  of  this  law  only  when, 
according  to  a  publication  in  the  Reichsgesetzblatt,  the  State 
in  which  his  establishment  is  situated  accords  to  German  mer- 
chandise marks  protection  to  the  same  extent  as  to  domestic 
marks. 

The  protection  of  a  merchandise  mark  and  the  rights  result- 
ing from  registry  may  be  claimed  only  through  the  medium  of 
an  attorney  residing  in  the  country.  Such  attorney  shall  be 
authorized  to  represent  his  principal  in  the  procedure  before 
the  Patent  Office  under  this  law,  as  well  as  in  civil  actions  con- 
cerning the  mark ;  he  shall  also  be  empowered  to  institute  penal 
actions.  Either  the  court  within  whose  jurisdiction  the  attorney 
is  domiciled  or  that  of  the  place  where  the  Patent  Office  is 
situated  is  competent  to  try  suits  against  the  registered  owner 
of  a  mark. 

Any  one  that  shall  make  declaration  of  a  foreign  mark  will 
have  to  show  at  the  same  time  that  he  has  applied  for  and 
obtained  legal  protection  for  it  in  the  State  where  his  estab- 
lishment is  situated.  Unless  otherwise  provided  in  interna- 
tional conventions,  registration  cannot  take  place  if  the  mark 
does  not  satisfy  the  requirements  of  this  law. 


340  GERMANY 

SEC.  24a.  Associations  recognized  by  law  and  pursuing 
economic  ends  may  register  marks  that  shall  serve  as  trade 
marks  in  the  business  operations  of  their  members,  even  if 
such  associations  do  not  own  an  establishment  for  the  manu- 
facture or  handling  of  goods  (association  marks). 

Juridical  persons  under  the  law  shall  stand  in  the  same 
position  as  the  above  mentioned  associations. 

The  provisions  of  Sec.  1  and  ff.,  as  to  trade  marks  shall 
apply  to  association  marks  insofar  as  other  provision  is  not 
made  in  Sees.  24a  to  24h. 

SEC.  24b.  The  application  for  the  registration  of  an  asso- 
ciation mark  must  be  accompanied  by  a  statement  setting  forth 
the  name,  location,  purpose  and  organization  of  the  association, 
and  containing  information  as  to  those  entitled  to  use  the  mark, 
the  regulations  governing  its  use  and  the  rights  and  duties  of 
the  members  in  case  of  the  misuse  of  the  mark.  Subsequent 
changes  are  to  be  reported  to  the  Patent  Office.  The  examina- 
tion of  the  statement  shall  be  open  to  all. 

A  fee  of  200  marks  shall  be  collected  in  connection  with 
every  application  for  the  registration  of  an  association  mark 
and  a  charge  of  100  marks  in  connection  with  each  renewal. 
When  the  first  application  is  not  granted,  100  marks  of  the  fee 
shall  be  refunded. 

SEC.  24c.  The  regulations  of  the  Patent  Office  shall  gov- 
ern the  preparation  of  the  Register  of  Association  Marks. 

SEC.  24d.  Rights  obtained  from  the  application  for  regis- 
tration of  an  association  mark  or  actual  registration  cannot  as 
such  be  transferred  to  another. 

SEC.  24e.  A  third  person  may  petition  the  cancellation  of 
an  association  mark  without  prejudice  to  the  provisions  of  Sec. 
9,  Nos.  1  and  3 : 

1)  If  the  association  for  which  the  mark  has  been  regis- 
tered no  longer  exists ; 

2)  If  the  association  permits  the  mark  to  be  used  in  a 
manner  contrary  to  the  general  purposes  of  the  association  or 
to  the  statement  that  accompanied  the  application  for  its  regis- 
tration.   Such  misuse  of  the  mark  may  be  said  to  exist  when 
the  business  world  is  misled  by  others  being  permitted  to  use 
the  mark. 

Paragraph  5  of  Sec.  9  shall  apply  in  cases  arising  under 
No.  1. 

SEC.  24f.  The  claim  of  an  association  for  damages  by  rea- 
son of  the  unauthorized  use  of  the  association  mark  (Sec.  14) 
shall  embrace  also  any  damages  suffered  by  its  members. 

SEC.  24g.    If  it  be  proven  to  the  Patent  Office  that  a  regis- 


GERMANY  341 

tered  trade  mark  was  used  by  an  association  up  to  the  time  of 
the  going  into  effect  of  this  law,  on  the  application  of  the  asso- 
ciation the  mark  shall  be  transferred  to  the  Register  of  Associa- 
tion Marks.  The  application  must  be  made  within  one  year 
from  the  going  into  effect  of  this  law  and  all  the  provisions  for 
registering  an  association  mark  must  be  complied  with.  The 
term  of  the  renewal  of  the  mark  shall  begin  with  the  filing  of 
the  application. 

SEC.  24h.  The  provisions  as  to  association  marks  shall  be 
applicable  for  foreign  association  marks  only  when  reciprocity 
is  provided  for  in  a  decree  published  in  the  Imperial  Law 
Gazette  (Reichsgesetzblatt). 

SEC.  25.  Necessary  rules  for  the  execution  of  this  law  in 
matters  concerning  the  organization  and  conduct  of  business 
at  the  Patent  Office,  as  well  as  the  procedure  to  be  followed 
therein,  shall  be  established  by  an  Imperial  Ordinance  with  the 
assent  of  the  Federal  Council. 

SEC.  26.  This  law  shall  go  into  force  on  October  1,  1894. 
From  that  date  declarations  of  merchandise  marks  will  no 
longer  be  accepted  under  the  Law  of  November  30,  1874,  for 
the  Protection  of  Marks. 


GIBRALTAR 

Gibraltar  has  no  proper  trade  mark  statute. 

Ordinance  to  Prevent  the  Imposition  of  Fraudulent  Marks 
on  Merchandise,  1888,  No.  4,  substantially  like  Merchandise 
Marks  Act  of  Great  Britain,  which  see. 


GOLD  COAST  COLONY 


Short  title  and  commencement 

1.  This  Ordinance  may  be  cited  as  the  Trade  Marks  Ordi- 
nance, 1914,  and  shall  come  into  operation  on  the  4th  day  of 
May,  1914. 

DEFINITIONS 

2.  For  the  purpose  of  this  Ordinance  unless  the  context 
otherwise  requires : 

"  Per  son"  includes  a  body  corporate. 

A  "Mark"  shall  include  a  device,  brand,  heading,  label, 
ticket,  name,  signature,  word,  letter,  numeral  or  any  combina- 
tion thereof. 

A  "Trade  Mark"  shall  mean  a  mark  used  or  proposed  to 
be  used  upon  or  in  connexion  with  goods  for  the  purposes  of 
indicating  that  they  are  the  goods  of  the  proprietor  of  such 
trade  mark  by  virtue  of  manufacture,  selection,  certification, 
dealing  with  offering  for  sale. 

A  "Registrable  Trade  Mark"  shall  mean  a  trade  mark 
which  is  capable  of  registration  under  the  provision  of  this 
Ordinance. 

A  "Registered  Trade  Mark"  shall  mean  a  trade  mark 
which  is  actually  on  the  register. 

"Prescribed"  shall  mean,  in  relation  to  proceedings  before 
the  Court,  prescribed  by  Rules  of  Court;  and,  in  other  cases, 
prescribed  by  this  Ordinance,  or  any  Rules  made  thereunder. 

"Registrar"  shall  mean  "The  Registrar  of  Trade  Marks." 

"Court"  shall  mean  the  "Supreme  Court  of  the  Colony." 

* '  Goods ' '  shall  mean  anything  which  is  the  subject  of  trade, 
manufacture,  or  merchandise. 

3.  The  Governor  may  appoint  a  Registrar  for  the  pur- 
poses of  this  Ordinance,  and  until  such  appointment  shall  be 
made  the  Chief  Registrar  shall  be  such  Registrar. 

4.  There  shall  be  kept  at  the  Registrar's  Office  a  book 
called  the  register  of  trade  marks,  wherein  shall  be  entered  all 
registered  trade  marks  with  the  names  and  addresses  of  their 
proprietors,  the  dates  on  which  applications  were  made  for  their 
registration,  as  hereinafter  provided,  notification   of  assign- 
ments, and  of  transmissions  of  trade  marks,  and  such  other  mat- 
ters as  may  be  from  time  to  time  prescribed. 


344  GOLD  COAST  COLONY 

No  trust  to  be  entered  on  register 

5.  There  shall  not  be  entered  in  the  register  kept  under 
this  Ordinance  any  notice  of  any  trust  expressed,  implied  or 
constructive,  nor  shall  any  such  notice  be  receivable  by  the 
Registrar. 

Incorporation  of  existing  register  and  classification 

6.  The  register  of  trade  marks  existing  at  the  date  of  the 
commencement  of  this  Ordinance  shall  be  incorporated  with  and 
form  part  of  the  register.    Subject  to  the  provisions  of  sections 
forty-two  and  forty-seven  of  this  Ordinance  the  validity  of  the 
original  entry  of  any  trade  mark  upon  the  registers  so  incor- 
porated shall  be  determined  in  accordance  with  the  Ordinances 
in  force  at  the  date  of  such  entry,  and  such  trade  mark  shall 
retain  its  original  date,  but  for  all  other  purposes  it  shall  be 
deemed  to  be  a  trade  mark  registered  under  this  Ordinance. 

All  trade  marks  registered  under  the  classification  of  goods 
as  provided  in  the  Second  Schedule  of  the  Trade  Marks  Ordi- 
nance, 1900,  shall  be  deemed  to  be  registered  under  the  corre- 
sponding classification  of  goods  as  provided  in  part  3  of  the 
Schedule  to  this  Ordinance. 

Saving  for  marks  already  registered  under  Trade  Marks 

Ordinance,  1900 

7.  (1)  Nothing  herein  contained  shall  affect  the  validity 
of  any  act  done  or  any  right  or  obligation  acquired  or  incurred 
under  or  by  virtue  of  the  provisions  of  the  Trade  Marks  Ordi- 
nance, 1900,  or  of  any  Ordinance  amending  the  same,  or  of  any 
rules  made  thereunder. 

Transfer  to  register  created  under  this  Ordinance 
(2)  All  trade  marks  duly  registered  under  said  Trade 
Marks  Ordinance,  1900,  shall,  three  months  before  the  expira- 
tion of  the  first  period  of  registration,  be  transferred  to  the 
register  kept  under  the  provisions  of  this  Ordinance,  and  shall 
thereupon  be  subject  to  the  provisions  of  this  Ordinance  in  all 
respects  as  though  they  had  been  originally  registered  there- 
under. 

Inspection  of  register  and  granting  of  certified  copies 

8.  The  register  kept  under  this  Ordinance  shall  at  all  con- 
venient times  be  open  to  the  inspection  of  the  public,  subject  to 
the  provisions  of  this  Ordinance  and  to  such  regulations  as  may 
be  prescribed;  and  certified  copies  of  any  entry  in  any  such 
register  shall  be  given  to  any  persons  requiring  the  same,  on 
payment  of  the  prescribed  fee. 


GOLD  COAST  COLONY  345 

REGISTRABLE  TRADE  MARKS 
Trade  marks.    What  marks  are  registrable  as  such 

9.  A  registrable  trade  mark  must  contain  or  consist  of  at 
least  one  of  the  following  essential  particulars : 

(1)  The  name  of  a  company,  individual  or  firm  represented 
in  a  special  or  particular  manner ; 

(2)  The  signature  of  the  applicant  for  registration  or  some 
predecessor  in  his  business; 

(3)  An  invented  word  or  invented  words; 

(4)  A  word  or  words  having  no  direct  reference  to  the 
character  or  quality  of  the  goods  and  not  being  according  to  its 
ordinary  signification  a  geographical  name  or  a  surname; 

(5)  Any  other  distinctive  mark  but  a  name,  signature,  or 
word  or  words  other  than  such  as  fall  within  the  description  in 
the  above  paragraphs  (1),  (2),  (3),  and  (4),  shall  not,  except 
by  order  of  the  Court,  be  deemed  a  distinctive  mark. 

For  the  purposes  of  this  section  "distinctive"  shall  mean 
adapted  to  distinguish  the  goods  of  the  proprietor  of  the  trade 
mark  from  those  of  other  persons. 

In  determining  whether  a  trade  mark  is  so  adapted  the 
Court  may,  in  the  case  of  a  trade  mark  in  actual  use,  take  into 
consideration  the  extent  to  which  such  user  has  rendered  such 
trade  mark  in  fact  distinctive  for  the  goods  with  respect  to 
which  it  is  registered  or  proposed  to  be  registered. 

Provided  always  that  any  mark  which  has  been  registered 
as  a  distinctive  mark  in  England  under  the  Trade  Marks  Act, 
1905,  shall  be  deemed  to  be  a  distinctive  mark  for  the  purpose 
of  this  Ordinance. 

Connexion  of  trade  mark  with  goods 

10.  A  trade  mark  must  be  registered  for  particular  goods 
or  classes  of  goods.    The  applicant  shall  in  his  application  state 
goods  included  in  one  class  only.     If  the  applicant  desires  to 
register  the  same  mark  for  goods  falling  in  more  than  one  class, 
he  shall  make  a  separate  application  in  respect  of  each  class 
and  each  of  such  applications  shall  be  treated  for  all  purposes 
as  separate  and  distinct  applications  and  the  entries  on  the 
register  in  pursuance  of  such  application  shall  for  all  purposes 
be  deemed  to  relate  to  separate  and  distinct  trade  marks. 

Coloured  trade  marks 

11.  A  trade  mark  may  be  limited  in  whole  or  in  part  to 
one  or  more  specified  colours,  and  in  such  case  the  fact  that  it 
is  so  limited  shall  be  taken  into  consideration  by  any  tribunal 
having  to  decide  on  the  distinctive  character  of  such  trade  mark. 
If  and  so  far  as  a  trade  mark  is  registered  without  limitation  of 


346  GOLD  COAST  COLONY 

colour  it  shall  be  deemed  to  be  registered  for  all  colours. 
Further  restriction  on  registration 

12.  (1)  It  shall  not  be  lawful  to  register  as  a  trade  mark 
or  part  of  a  trade  mark  any  matter  the  use  of  which  would,  by 
reason  of  its  being  calculated  to  deceive  or  otherwise  be  dis 
entitled  to  protection  in  a  Court  of  Justice,  or  would  be  con 
trary  to  law  or  morality,  or  any  scandalous  design. 

(2)  No  trade  mark  shall  be  registered  for  any  goods  set 
forth  and  included  in  classes  23,  24,  and  25,  of  the  Third  Part 
of  the  Schedule  hereto  unless  such  trade  mark  has  been  and  is 
registered  in  the  United  Kingdom  in  respect  of  such  goods. 
REGISTRATION  OF  TRADE  MARKS 
Application  for  registration 

13.  (1)  Any  person  claiming  to  be  the  proprietor  of  a 
trade  mark  may  by  himself  or  his  agent  apply  to  the  Registrar 
for  the  registration  thereof. 

(2)  The  application  must  be  made  in  the  prescribed  form, 
and  must  be  accompanied  by  not  less  than  three  representations 
of  the  trade  mark  and  by  a  stereotype  block  of  such  represen- 
tations. 

(3)  The  applicant  must  state  the  particular  goods  or  classes 
of  goods  in  connexion  with  which  he  desires  his  trade  mark  to 
be  registered. 

(4)  The  application  must  be  left  with  or  sent  by  post  to 
the  Registrar. 

(5)  The  date  of  the  delivery  or  receipt  of  the  application 
shall  be  endorsed  thereon  and  recorded  in  the  Registrar's  Office. 

(6)  When  an  applicant  for  the  registration  of  a  trade  mark 
is  out  of  the  Colony  at  the  time  of  making  the  application,  he 
shall  give  the  Registrar  an  address  for  service  in  the  Colony 
and  if  he  fails  to  do  so  the  Registrar  may  refuse  to  proceed  with 
the  application  until  the  address  has  been  given. 

Action  in  regard  to  application 

14.  (1)  Subject  to  the  provisions  of  this  Ordinance  the 
Registrar  may  refuse  such  application  as  aforesaid,  or  may 
accept  it  absolutely  or  subject  to  conditions,  amendments,  or 
modifications. 

(2)  In  case  of  any  such  refusal  or  conditional  acceptance 
the  Registrar  shall,  if  required  by  the  applicant,  state  in  writing 
.the  grounds  of  his  decision  and  the  materials  used  by  him  in 
arriving  at  the  same,  and  such  decision  shall  be  subject  to  appeal 
to  the  Court. 

(3)  An  appeal  under  this  section  shall  be  made  in  the  pre- 
scribed manner,  and  on  such  appeal  the  Court  shall,  if  required, 


GOLD  COAST  COLONY  347 

hear  the  applicant  and  the  Registrar,  and  shall  make  an  order 
determining  whether,  and  subject  to  what  conditions,  amend- 
ments, or  modifications,  if  any,  the  application  is  to  be  accepted. 

Disclaimer 

15.  If  a  trade  mark  contains  parts  not  separately  regis- 
tered by  the  proprietor  as  trade  marks,  or  if  it  contains  matter 
common  to  the  trade  or  otherwise  of  a  non-distinctive  character, 
the  Registrar  or  the  Court,  in  deciding  whether  such  trade  mark 
shall  be  entered  or  shall  remain  upon  the  register,  may  require, 
as  a  condition  of  its  being  upon  the  register,  that  the  proprietor 
shall  disclaim  any  right  to  the  exclusive  use  of  any  part  or  parts 
of  such  trade  mark  or  all  or  any  portion  of  such  matter,  to  the 
exclusive  use  of  which  they  hold  him  not  to  be  entitled,  or  that 
he  shall  make  such  other  disclaimer  as  they  may  consider  need- 
ful for  the  purpose  of  denning  his  rights  under  such  registra- 
tion :  Provided  always  that  no  disclaimer  upon  the  register  shall 
affect  any  rights  of  the  proprietor  of  a  trade  mark  except  such 
as  arise  out  of  the  registration  of  the  trade  mark  in  respect  of 
which  the  disclaimer  is  made. 

Advertisement  of  application 

16.  Every  application  for  registration  of  a  trade  mark 
under  this  Ordinance  and  a  representation  of  such  mark  shall, 
as  soon  as  may  be  after  its  receipt,  be  advertised  by  the  Regis- 
trar in  the  Gazette  unless  the  Registrar  refuses  to  entertain  the 
application. 

Opposition  to  Registration 

17.  (1)  Any  person  may,  within  three  months,  or  such 
further  time,  not  exceeding  nine  months  in  all,  as  the  Registrar 
may  allow,  of  the  advertisement  of  the  application,  give  notice 
to  the  Registrar  of  opposition  to  such  registration. 

(2)  Such  notice  shall  be  given  in  writing  and  in  duplicate, 
and  shall  include  a  statement  of  the  ground  of  opposition. 

(3)  The  Registrar  shall  send  a  copy  of  such  notice  to  the 
applicant,  and  within  one  month  after  the  receipt  of  such  notice, 
or  such  further  time,  not  exceeding  three  months  in  all  as  the 
Registrar  may  allow,  the  applicant  shall  send  to  the  Registrar 
a  counter-statement  in  duplicate  of  the  grounds  on  which  he 
relies  for  his  application,  and  if  he  does  not  do  so,  he  shall  be 
deemed  to  have  abandoned  his  application. 

(4)  If  the  applicant  send  such  counter-statement  the  Regis- 
trar shall  furnish  a  copy  thereof  to  the  person  giving  notice 
of  opposition,  and  shall  require  him  to  give  security  in  such 
manner  and  to  such  amount  as  the  Registrar  may  require  for 
such  costs  as  may  be  awarded  in  respect  of  such  opposition, 


348  GOLD  COAST  COLONY 

and  if  such  security  is  not  given  within  fourteen  days  after  such 
requirement  was  made  or  such  further  time  as  the  Registrar 
may  allow,  the  opposition  shall  be  deemed  to  be  withdrawn. 

(5)  If  the  person  who  gave  notice  of  opposition  duly  gives 
such  security  as  aforesaid,  the  Registrar  shall  inform  the  appli- 
cant thereof  in  writing,  and  thereafter  the  case  shall  be  deemed 
to  stand  for  the  determination  of  the  Court. 

(6)  Where  the  opponent  is  out  of  the  Colony  he  shall,  with 
the  notice  of  opposition  to  registration,  give  the  Registrar  an 
address  for  service  in  the  Colony. 

Cases.    How  brought  before  the  Court 

18.  (1)  When  a  case  stands  for  the  determination  of  the 
Court  under  the  provisions  of  the  last  preceding  section,  the 
Registrar  shall  require  the  applicant  tojnake  a  written  applica- 
tion to  the  Court  for  an  order  that,  notwithstanding  the  opposi- 
tion of  which  notice  has  been  given,  the  registration  of  the  trade 
mark  be  proceeded  with  by  the  Registrar,  or  to  take  such  other 
proceedings  as  may  be  proper  and  necessary  for  the  determina- 
tion of  the  case  by  the  Court. 

(2)  The  applicant  shall  thereupon  make  his  application  or 
take  such  other  proceedings  as  aforesaid,  within  the  period  of 
one  month  above  named  or  such  further  time  as  the  Registrar 
may  allow,  and  shall  also  within  the  like  period  give  notice 
thereof  to  the  Registrar. 

(3)  If  the  applicant  shall  fail  to  make  such  application  or 
to  take  such  other  proceedings,  of  which  failure  the  non-receipt 
by  the  Registrar  of  the  said  notice  shall  be  sufficient  proof,  the 
applicant  shall  be  deemed  to  have  abandoned  his  application. 

Costs 

19.  The  Court  shall  have  power  in  proceedings  mider  the 
last  two  preceding  sections  of  this  Ordinance  to  award  to  any 
party  such  costs  as  it  may  consider  reasonable,  and  to  direct 
how  and  by  what  parties  they  are  to  be  paid. 

Date  of  registration 

20.  When  an  application  for  registration  of  a  trade  mark 
has  been  accepted  and  has  not  been  opposed,  and  the  time  for 
notice  of  opposition  has  expired,  or  having  been  opposed  the 
opposition  has  been  decided  in  favour  of  the  applicant,  the 
Registrar  shall,  unless  the  Court  otherwise  direct,  register  the 
said  trade  mark,  and  the  trade  mark,  when  registered,  shall  be 
registered  as  of  the  date  of  the  application  for  registration, 
and  such  date  shall  be  deemed  for  the  purposes  of  this  Ordinance 
to  be  the  date  of  registration. 


GOLD  COAST  COLONY  349 

Certificate  of  registration 

21.  The  Registrar  shall  have  a  seal  and  on  the  registra- 
tion of  a  trade  mark  the  Registrar  shall  issue  to  the  applicant 
a  certificate  in  the  prescribed  form  of  the  registration  of  such 
trade  mark  under  the  hand  and  seal  of  the  Registrar. 

Advertisement  of  application 

22.  When  an  application  for  registration  of  a  trade  mark 
has  been  accepted,  whether  absolutely  or  subject  to  conditions, 
the  Registrar  shall,  as  soon  as  may  be  after  such  acceptance, 
cause  the  application  as  accepted  to  be  advertised  in  the  Gazette. 
Such  advertisement  shall  set  forth  all  conditions  subject  to 
which  the  application  has  been  accepted. 

Limit  of  time  for  proceeding  with  application 

23.  Where  the  registration  of  a  trade  mark  is  not  com- 
pleted within  twelve  months  from  the  date  of  the  application,  by 
reason  of  default  on  the  part  of  the  applicant,  the  Registrar 
may,  after  giving  notice  in  writing  of  the  non-completion  to  the 
applicant  or  to  his  agent  (if  any),  treat  the  application  as  aban- 
doned unless  it  is  completed  before  the  expiration  of  fourteen 
days  from  such  notice  or  of  such  further  time  as  the  Registrar 
may  in  special  cases  permit. 

IDENTICAL  TRADE  MARKS 

24.  Except  by  order  of  the  Court  or  in  the  case  of  trade 
marks  in  use  before  the  tenth  day  of  January  one  thousand  nine 
hundred,  no  trade  mark  shall  be  registered  in  respect  to  any 
goods  or  description  of  goods  which  is  identical  with  one  belong- 
ing to  a  different  proprietor  which  is  already  on  the  register 
with  respect  to  such  goods  or  description  of  goods,  or  so  nearly 
resembling  such  a  trade  mark  as  to  be  calculated  to  deceive. 

Rival  claims  to  identical  marks 

25.  Where  each  of  several  persons  claims  to  be  proprietor 
of  the  same  trade  marks  or  of  nearly  identical  trade  marks  in 
respect  to  the  same  goods  or  description  of  goods,  and  to  be 
registered  as  such  proprietor,  the  Registrar  may  refuse  to  regis- 
ter any  of  them  until  their  rights  have  been  determined  by  the 
Court  or  have  been  settled  by  agreement  in  a  manner  approved 
by  him. 

Concurrent  user 

26.  In  case  of  honest  concurrent  user  or  of  other  special 
circumstances  which  in  the  opinion  of  the  Court  make  it  proper 
so  to  do,  the  Court  may  permit  the  registration  of  the  same 
trade  mark,  or  of  nearly  identical  trade  marks  for  the  same 
goods  or  description  of  goods  by  more  than  one  proprietor  sub- 
ject to  such  conditions  and  limitations,  if  any,  as  to  mode  or 


350  GOLD  COAST  COLONY 

place  of  user  or  otherwise,  as  it  may  think  it  right  to  impose. 

ASSIGNMENT 
Assignment  and  transmission  of  trade  mark 

27.  A  trade  mark  when  registered  shall  be  assigned  and 
transmitted  only  in  connexion  with  the  good  will  of  the  business 
concerned  in  the  particular  goods  or  classes  of  goods  for  which 
it  has  been  registered,  and  shall  be  determinable  with  that  good 
will. 

Apportionment  of  marks  on  dissolution  of  partnerships 

28.  In  any  case  where  from  any  cause,  whether  by  reason 
of  dissolution  of  partnership  or  otherwise,  a  person  ceases  to 
carry  on  business  and  the  good  will  of  such  person  does  not 
pass  to  one  successor  but  is  divided,  the  Registrar  may  (sub- 
ject to  the  provisions  of  this  Ordinance  as  to  associated  trade 
marks),  on  the  application  of  the  parties  interested,  permit  an 
apportionment  of  the  registered  trade  marks  of  the  person 
among  the  persons  in  fact  continuing  the  business,  subject  to 
such  conditions  and  modifications,  if  any,  as  he  may  think  neces- 
sary in  the  public  interest.    Any  decision  of  the  Registrar  under 
this  section  shall  be  subject  to  appeal  to  the  Court. 

ASSOCIATED  TRADE  MARKS 

29.  If  application  be  made  for  the  registration  of  a  -trade 
mark  so  closely  resembling  a  trade  mark  of  the  applicant  al- 
ready on  the  register  for  the  same  goods  or  description  of  goods 
as  to  be  calculated  to  deceive  or  cause  confusion  if  used  by  a 
person  other  than  the  applicant,  the  tribunal  hearing  the  ap- 
plication may  require  as  a  condition  of  registration  that  such 
trade  marks  shall  be  entered  on  the  register  as  associated  trade 
marks. 

Combined  trade  marks 

30.  If  the  proprietor  of  a  trade  mark  claims  to  be  entitled 
to  the  exclusive  use  of  any  portion  of  such  trade  mark  sepa- 
rately he  may  apply  to  register  the  same  as  separate  trade 
marks.    Each  separate  trade  mark  must  satisfy  all  the  condi- 
tions and  shall  have  all  the  incidents  of  an  independent  trade 
mark,  except  that  when  registered  it  and  the  trade  mark  of 
which  it  forms  a  part  shall  be  deemed  to  be  associated  trade 
marks  and  shall  be  entered  on  the  register  as  such,  but  the  user 
of  the  whole  trade  mark  shall  for  the  purposes  of  this  Ordinance 
be  deemed  to  be  also  a  user  of  such  registered  trade  marks  be- 
longing to  the  same  proprietor  as  it  contains. 

Series  of  trade  marks 

31.  When  a  person  claiming  to  be  proprietor  of  several 
trade  marks  for  the  same  description  of  goods  which,  while 


GOLD  COAST  COLONY  351 

resembling  each  other  in  the  material  particulars  thereof,  yet 
differ  in  respect  of: 

(a)  statements  of  the  goods  for  which  they  are  respectively 
used  or  proposed  to  be  used;  or 

(fc)  statements  of  number,  price,  quality,  or  names  of 
places;  or 

(c)  other  matter  of  a  non-distinctive  character  which  does 
not  substantially  affect  the  identity  of  the  trade  mark ;  or 

(d)  colour; 

seeks  to  register  such  trade  marks,  they  may  be  registered  as 
a  series  in  one  registration.  All  the  trade  marks  in  a  series  of 
trade  marks  so  registered  shall  be  deemed  to  be,  and  shall  be 
registered  as,  associated  trade  marks. 

Assignment  and  user  of  associated  trade  marks 

32.  Associated  trade  marks  shall  be  assignable  or  trans- 
missible only  as  a  whole  and  not  separately,  but  they  shall  for 
all  other  purposes  be  deemed  to  have  been  registered  as  separate 
trade  marks.    Provided  that  where  under  the  provisions  of  this 
Ordinance  user  of  a  registered  trade  mark  is  required  to  be 
proved  for  any  purpose,  the  tribunal  may,  if  and  so  far  as  it 
shall  think  right,  accept  user  of  an  associated  registered  trade 
mark,  or  of  the  trade  mark  with  additions  or  alterations  not 
substantially  affecting  its  identity,  as  an  equivalent  for  such 
user. 

DURATION  AND  RENEWAL  OF  REGISTRATION 
Duration  of  Registration 

33.  The  registration  of  a  trade  mark  shall  be  for  a  period 
of  fourteen  years,  but  may  be  renewed  from  time  to  time  in 
accordance  with  the  provisions  of  this  Ordinance. 

Renewal  of  registration 

34.  The  Registrar  shall,  on  application  made  by  the  regis- 
tered proprietor  of  a  trade  mark  in  the  prescribed  manner  and 
within  the  prescribed  period,  renew  the  registration  of  such 
trade  mark  for  a  period  of  fourteen  years  from  the  expiration 
of  the  original  registration  or  of  the  last  renewal  of  registra- 
tion, as  the  case  may  be,  which  date  is  herein  termed  the  "ex- 
piration of  the  last  registration.'* 

Procedure  on  expiry  of  period  of  registration 

35.  At  a  time  not  being  less  than  two  months  nor  more 
than  three  months  before  the  expiration  of  the  last  registration 
of  a  trade  mark  the  Registrar  shall  send  notice  in  the  prescribed 
manner  to  the  registered  proprietor  at  his  registered  address 
of  the  date  at  which  the  existing  registration  will  expire  and 
the  conditions  as  to  payment  of  fees  and  otherwise  upon  which 


352  GOLD  COAST  COLONY 

a  renewal  of  such  registration  may  be  obtained,  and  if  such 
condition  be  not  previously  complied  with  the  Registrar  shall 
at  the  expiration  of  one  month  from  the  date  of  the  giving  of 
the  first  notice  send  a  second  notice  to  the  same  effect,  and  if 
at  the  expiration  of  the  time  prescribed  in  that  behalf  such  con- 
dition has  not  been  duly  complied  with,  the  Registrar  may  re- 
move such  trade  mark  from  the  register  subject  to  such  con- 
ditions (if  any)  as  to  its  restoration  to  the  register  as  may  be 
prescribed. 

Status  of  unrenewed  trad?,  marks 

36.  Where  a  trade  mark  has  been  removed  from  the  regis- 
ter for  non-payment  of  the  fee  for  renewal,  such  trade  mark 
shall,  nevertheless,  for  the  purpose  of  any  application  for  regis- 
tration during  one  year  next  after  the  date  of  such  removal,  be 
deemed  to  be  a  trade  mark  which  is  already  registered,  unless 
it  is  shown  to  the  satisfaction  of  the  Registrar  that  there  has 
been  no  bona  fide  trade  user  of  such  trade  mark  during  the  two 
years  immediately  preceding  such  removal. 

CORRECTION  AND  RECTIFICATION  OF  APPLICATIONS,  OR  OF 

THE  REGISTER 
Registrar  may  correct  formal  errors  in  applications 

37.  The  Registrar  may,  on  request  in  writing,  accompanied 
by  the  prescribed  fee: 

(a)  Correct  any  clerical  error  in  or  in  connection  with  an 
application  for  the  registration  of  a  trade  mark,  or 

(fc)  Permit  an  applicant  for  registration  of  a  trade  mark 
to  amend  his  application  by  omitting  any  particular  goods  or 
classes  of  goods  in  connection  with  which  he  has  desired  the 
trade  mark  to  be  registered. 

Correction  of  register 

38.  The  Registrar  may,  on  request  made  in  the  prescribed 
manner  by  the  registered  proprietor  or  by  some  person  entitled 
by  law  to  act  in  his  name : 

(1)  Correct  any  error  in  the  name  or  address  of  the  regis- 
tered proprietor  of  a  trade  mark;  or 

(2)  Enter  any  change  in  the  name  or  address  of  the  person 
who  is  registered  as  proprietor  of  a  trade  mark;  or 

(3)  Cancel  the  entry  of  a  trade  mark  on  the  register;  or 

(4)  Strike  out  any  goods  or  classes  of  goods  from  those 
for  which  a  trade  mark  is  registered ;  or 

(5)  Enter  a  disclaimer  or  memorandum  relating  to  a  trade 
mark  which  does  not  in  any  way  extend  the  rights  given  by  the 
existing  registration  of  such  trade  mark. 

Any  decision  of  the  Registrar  under  this  section  shall  be 


GOLD  COAST  COLONY  353 

subject  to  appeal  to  the  Court. 

Entry  in  register  of  assignments 

39.  Subject  to  the  provisions  of  this  Ordinance,  where  a 
person  becomes  entitled  by  assignment,  transmission,  or  other 
operation  of  the  law  to  a  registered  trade  mark,  the  Registrar 
shall,  on  request,  made  in  the  prescribed  manner  and  on  proof 
of  title  to  his  satisfaction,  cause  the  name  and  address  of  such 
person  to  be  entered  as  proprietor  of  the  trade  mark  in  the  reg- 
ister of  trade  marks,  provided  that  any  decision  of  the  Registrar 
under  this  section  shall  be  subject  to  appeal  to  the  Court. 

Application  to  alter  registered  trade  mark 

40.  (1)  The  registered  proprietor  of  any  registered  trade 
mark  may  apply  to  the  Registrar  for  leave  to  add  to  or  alter 
such  mark  in  any  manner,  not  substantially  affecting  the  identity 
of  the  same,  and  the  Registrar  may  refuse  or  grant  leave  on 
such  terms  as  he  may  think  fit;  but  any  such  refusal  or  condi- 
tional permission  shall  be  subject  to  appeal  to  the  Court. 

Prescribed  manner 

(2)  If  leave  be  granted,  the  mark  as  altered  shall  be  adver- 
tised in  the  prescribed  manner;  and  the  Registrar  shall,  on 
payment  of  the  prescribed  fee,  cause  the  register  to  be  altered 
in  conformity  with  the  order  of  leave. 

Rectification  of  register  loy  the  Court 

41.  (1)  The  Court  may,  on  the  application  of  any  person 
aggrieved  by  the  omission  without  sufficient  cause  of  the  name 
of  any  person  or  of  any  other  particulars  from  the  register  kept 
under  this  Ordinance  or  by  any  entry  made  without  sufficient 
cause  in  any  such  register,  or  by  any  entry  wrongfully  remain- 
ing on  the  register,  make  such  order  for  making,  expunging,  or 
varying  the  entry  as  the  Court  thinks  fit,  or  the  Court  may  re- 
fuse the  application,  and  in  either  case  may  make  such  order 
with  respect  to  the  costs  of  the  proceedings  as  the  Court  thinks 
fit. 

(2)  The  Court  may  in  any  proceedings  under  this  section 
decide  any  question  that  it  may  be  necessary  or  expedient  to 
decide  for  the  rectification  of  a  register,  and  may  direct  an 
issue  to  be  tried  for  the  decision  of  any  question  of  fact,  and 
may  award  damages  to  the  party  aggrieved. 

(3)  Notice  of  any  intended  application  to  the  Court  under 
this  section  shall  be  given  to  the  Registrar  by  the  applicant,  and 
the  Registrar  shall  be  entitled  to  be  heard  on  the  application. 

(4)  In  case  of  fraud  in  the  registration  or  transmission  of 
a  registered  trade  mark,  the  Registrar  may  himself  apply  to 
the  Court  under  the  provisions  of  this  section. 


354  GOLD  COAST  COLONY 

(5)  If  any  order  of  the  Court  rectifying  the  register  is 
made,  the  Registrar  shall  on  proof  thereof  and  on  payment  of 
the  prescribed  fee  cause  the  register  to  be  altered  in  conformity 
with  such  order. 

Trade  Maries  registered  under  previous  enactments 

42.  No  trade  mark  which  is  upon  the  register  at  the  com- 
mencement of  this  Ordinance  and  which  under  this  Ordinance 
is  a  registrable  trade  mark  shall  be  removed  from  the  register 
on  the  ground  that  it  was  not  registrable  under  the  Ordinance 
in  force  at  the  date  of  its  registration.    But  nothing  in  this  sec- 
tion contained  shall  subject  any  person  to  any  liability  in  re- 
spect of  any  act  or  thing  done  before  the  commencement  of  this 
Ordinance  to  which  he  would  not  have  been  subject  under  the 
Ordinance  then  in  force. 

Non-user  of  Trade  Mark 

43.  A  registered  trade  mark  may,  on  the  application  to 
the  Court  of  any  person  aggrieved,  be  taken  off  the  register  in 
respect  of  any  of  the  goods  for  which  it  is  registered,  on  the 
ground  that  it  was  registered  by  the  proprietor  or  a  predecessor 
in  title  without  any  bona  fide  intention  to  use  the  same  in  con- 
nexion with  such  goods  and  there  has  in  fact  been  no  bona  fide 
user  of  the  same  in  connexion  therewith,  or  on  the  ground  that 
there  has  been  no  bona  fide  user  of  such  trade  mark  in  connexion 
with  such  goods  during  the  five  years  immediately  preced- 
ing the  application,  unless  in  either  case  such  non-user  is  shown 
to  be  due  to  special  circumstances  in  the  trade  and  not  to  any 
intention  not  to  use  or  to  abandon  such  trade  mark  in  respect 
of  such  goods. 

EFFECT  OF  REGISTRATION 
Powers  of  registered  proprietor 

44.  Subject  to  the  provisions  of  this  Ordinance: 

(1)  The  person  for  the  time  being  entered  in  the  register 
as  proprietor  of  a  trade  mark  shall,  subject  to  any  rights  ap- 
pearing from  such  register  to  be  vested  in  any  other  person, 
have  power  to  assign  the  same,  and  to  give  effectual  receipt  for 
any  consideration  for  such  assignment. 

(2)  Any  equities  in  respect  of  a  trade  mark  may  be  en- 
forced in  like  manner  as  in  respect  of  any  other  personal 
property. 

Rights  of  proprietor  of  trade  mark 

45.  Subject  to  the  provisions  of  section  forty-seven  of  this 
Ordinance  and  to  any  limitations  and  conditions  entered  upon 
the  register,  the  registration  of  a  person  as  proprietor  of  a 
trade  mark  shall,  if  valid,  give  to  such  person  the  exclusive  right 


GOLD  COAST  COLONY  355 

to  the  use  of  such  trade  mark  upon  or  in  connection  with  the 
goods  in  respect  of  which  it  is  registered :  Provided  always  that 
where  two  or  more  persons  are  registered  proprietors  of  the 
same  or  substantially  the  same  trade  mark  in  respect  to  the 
same  goods  no  right  of  exclusive  user  of  such  trade  mark  shall 
(except  so  far  as  their  respective  rights  shall  have  been  de- 
fined by  the  Court)  be  acquired  by  any  one  of  such  persons  as 
against  any  other  by  the  registration  thereof,  but  each  of  such 
persons  shall  otherwise  have  the  same  rights  as  if  he  were  the 
sole  registered  proprietor  thereof. 

Registration  to  be  prima  facie  evidence  of  validity 

46.  In  all  legal  proceedings  relating  to  a  registered  trade 
mark  (including  applications  under  section  forty-one  of  this 
Ordinance)  the  fact  that  a  person  is  registered  as  proprietor 
of  such  trade  mark  shall  be  prima  facie  evidence  of  the  validity 
of  the  original  registration  of  such  trade  mark  and  of  all  sub- 
sequent assignments  and  transmissions  of  the  same. 

Registration  to  be  conclusive  after  seven  years 

47.  In  all  legal  proceedings  relating  to  a  registered  trade 
mark  (including  applications  under  section  forty-one  of  this 
Ordinance)  the  original  registration  of  such  trade  mark  shall 
after  the  expiration  of  seven  years  from  the  date  of  such  orig- 
inal registration  (or  seven  years  from  the  passing  of  this  Ordi- 
nance, whichever  shall  last  happen)  be  taken  to  be  valid  in  all 
respects  unless  such  original  registration  was  obtained  by  fraud, 
or  unless  the  trade  mark  offends  against  the  provisions  of  sec- 
tion twelve  of  this  Ordinance:   Provided  that  nothing  in  the 
Ordinance  shall  entitle  the  proprietor  of  a  registered  trade  mark 
to  interfere  with  or  restrain  the  user  by  any  person  of  a  similar 
trade  mark  upon  or  in  connexion  with  goods  upon  or  in  con- 
nexion with  which  such  person  has,  by  himself  or  his  predeces- 
sors in  business,  continuously  used  such  trade  mark  from  a  date 
anterior  to  the  user  of  the  first-mentioned  trade  mark  by  the 
proprietor  thereof  or  his  predecessors  in  business,  or  to  object 
(on  such  user  being  proved)  to  such  person  being  put  upon  the 
register  for  such  similar  trade  mark  in  respect  of  such  goods 
under  the  provisions  of  section  twenty-six  of  this  Ordinance. 

No  protection  for  unregistered  trade  marks 

48.  No  person  shall  be  entitled  to  institute  any  proceed- 
ings to  prevent,  or  to  recover  damages  for,  the  infringement 
of  an  unregistered  trade  mark  unless  such  trade  mark  has  been 
in  use  for  not  less  than  three  years  prior  to  the  commencement 
of  such  proceedings,  and  has  been  refused  registration  under 
this  Ordinance.    The  Registrar  may,  on  request,  grant  a  cer- 


356  GOLD  COAST  COLONY 

tificate  that  such  registration  has  been  refused. 
Action  for  infringement 

49.  In  an  action  for  the  infringement  of  a  trade  mark  the 
Court  trying  the  question  of  infringement  shall  admit  evidence 
of  the  usages  of  the  trade  in  respect  of  the  get-up  of  the  goods 
for  which  the  trade  mark  is  registered  and  of  any  trade  marks 
or  get-up  legitimately  used  in  connection  with  such  goods  by 
other  persons. 

No  interference  with  bona  fide  user  of  name  or  description 

of  goods 

50.  No  registration  under  this  Ordinance  shall  interfere 
with  any  bona  fide  use  by  a  person  of  his  own  name  or  place  of 
business  or  that  of  any  of  his  predecessors  in  business  or  the 
use  by  any  person  of  any  bona  fide  description  of  the  character 
or  quality  of  his  goods. 

Action  for  passing  off  goods 

51.  Nothing  in  this  Ordinance  shall  be  deemed  to  affect  the 
rights  of  action  against  any  person  for  passing  off  goods  as 
those  of  another  person  or  the  remedies  in  respect  thereof. 

LEGAL  PROCEEDINGS 
Certificates  of  validity 

52.  In  any  legal  proceeding  in  which  the  validity  of  the 
registration  of  a  registered  trade  mark  comes  into  question 
and  is  declared  in  favour  of  the  proprietor  of  such  trade  mark, 
the  Court  may  certify  the  same,  and  if  it  so  certifies,  then  in 
any  subsequent  legal  proceeding  in  which  such  validity  comes 
into  question  the  proprietor  of  the  said  trade  mark,  on  obtain- 
ing a  final  order  or  judgment  in  his  favour,  shall  have  his  full 
costs,  charges,  and  expenses  as  between  solicitor  and  client  un- 
less in  such  subsequent  proceeding  the  Court  certifies  that  he 
ought  not  to  have  the  same. 

Proceedings  before  the  Court 

53.  Every  application  made  to  the  Court  under  sections 
forty  and  forty-one  and  all  proceedings  thereunder  shall  be 
conducted  in  such  manner  as  the  Court  may  direct. 

COSTS 

54.  In  all  proceedings  before  the  Court  under  this  Ordi- 
nance the  costs  of  the  Registrar  shall  be  in  the  discretion  of  the 
Court,  but  the  Registrar  shall  not  be  ordered  to  pay  the  costs 
of  any  other  of  the  parties. 

EVIDENCE 
Certified  copies  to  be  admitted  as  evidence 

55.  Printed  or  written  copies  or  extracts  purporting  to  be 


GOLD  COAST  COLONY  357 

certified  by  the  Eegistrar  of  or  from  any  document,  register, 
and  other  books  filed  or  kept  under  this  Ordinance  in  his  office, 
shall  be  admitted  in  evidence  in  all  Courts  in  this  Colony,  and 
all  proceedings,  without  further  proof  or  production  of  the 
originals. 

Certificate  of  registration  to  be  prima  facie  evidence 

56.  A  certificate  purporting  to  be  under  the  hand  of  the 
Registrar  as  to  any  entry,  matter,  or  thing  which  he  is  author- 
ized by  this  Ordinance,  or  any  rules  made  thereunder,  to  make 
or  do,  shall  be  prima  facie  evidence  of  the  entry  having  been 
made  and  of  the  contents  thereof,  and  of  the  matter  or  thing 
having  been  done  or  left  undone. 

Applications  may  be  sent  by  post 

57.  (1)  Any  application,  notice  or  other  document  author- 
ized or  required  to  be  left  with,  made,  or  given  to  the  Registrar 
or  to  any  other  person  under  this  Ordinance,  may  be  sent  by  a 
registered  letter  through  the  post,  and  if  so  sent  shall  be  deemed 
to  have  been  so  left,  made,  or  given  respectively  at  the  time 
when  the  letter  containing  the  same  would  be  delivered  in  the 
ordinary  course  of  post. 

(2)  In  proving  such  service  or  sending  it  shall  be  sufficient 
to  prove  that  the  letter  was  properly  addressed  and  registered 
at  the  Post  Office. 

POWERS  AND  DUTIES  OF  REGISTRAR  OF  TRADE  MARKS 
Exercise  of  discretionary  power  by  Registrar 

58.  Where  any  discretionary  or  other  power  is  given  to 
the  Registrar  by  this  Ordinance  or  rules  made  thereunder,  he 
shall  not  exercise  that  power  adversely  to  the  applicant  for 
registration  or  the  registered  proprietor  of  the  trade  mark  in 
question  without  (if  duly  required  so  to  do  within  the  prescribed 
time)  giving  such  applicant  or  registered  proprietor  an  oppor- 
tunity of  being  heard. 

Registrar  may  apply  to  Attorney  General  for  directions 

59.  The  Registrar  may,  in  any  case  of  doubt  or  difficulty 
arising  in  the  administration  of  any  of  the  provisions  of  this 
Ordinance,  apply  to  the  Attorney  General  for  directions  in  the 
matter. 

POWER  TO  MAKE  RULES  AS  TO  FEES,  ETC. 

60.  (1)  The  Governor  in  Council  may  from  time  to  time 
make,  alter  or  revoke  rules,  prescribe  such  forms,  and  generally 
do  such  things  as  he  thinks  expedient  subject  to  the  provisions 
of  this  Ordinance : 

(a)  for  regulating  the  practice  of  registration  under  this 
Ordinance ; 


358  GOLD  COAST  COLONY 

(b)  for  classifying  goods  for  the  purposes  of  registration 
of  trade  marks ; 

(c)  for  prescribing  the  fees  payable  in  respect  of  applica- 
tions and  registrations  and  other  matters  under  the  Ordinance 
and  the  mode  of  payment  of  the  same ; 

(d)  generally  for  regulating  all  things  by  the  said  Ordi- 
nance placed  under  the  direction  or  control  of  the  Eegistrar ; 

(e)  for  altering  or  revoking  the  provisions  contained  in  the 
schedules  hereto. 

(2)  Any  rules  made  in  pursuance  of  this  section  shall  be 
published  in  the  Gazette  and  shall  come  into  operation  on  the 
publication  thereof,  subject  to  disallowance  by  His  Majesty. 

(3)  Unless  and  until  they  be  altered  or  revoked  under  this 
section  the  provisions  contained  in  the  schedule  hereto  shall  be 
and  remain  in  force. 

SPECIAL  TRADE  MARKS 
Standardisation,  etc.,  of  trade  marks 

61.  Where  any  association  or  person  undertakes  the  exam- 
ination of  any  goods  in  respect  of  origin,  material,  mode  of 
manufacture,  quality,  accuracy,  or  other  characteristic,  and  cer- 
tifies the  result  of  such  examination  by  mark  used  upon  or  in 
connexion  with  such  goods,  the  Registrar  may,  if  he  shall  judge 
it  to  be  to  the  public  advantage,  permit  such  association  or  per- 
son to  register  such  mark  as  a  trade  mark  in  respect  of  such 
goods,  whether  or  not  such  association  or  person  be  a  trading 
association  or  trader  or  possessed  of  a  goodwill  in  connexion 
with  such  examination  and  certifying.    When  so  registered  such 
trade  mark  shall  be  deemed  in  all  respects  to  be  a  registered 
trade  mark,  and  such  association  or  person  to  be  the  proprietor 
thereof,  save  that  such  trade  mark  shall  be  transmissible  or 
assignable  only  by  permission  of  the  Registrar. 

TRADE  MARKS  REGISTERED  IN  GREAT  BRITAIN 
Registration  of  British  Trade  Marks 

62.  (1)  Any  person  who  has  registered  a  trade  mark  in 
Great  Britain  shall  be  entitled  to  registration  of  his  trade  mark 
under  this  Ordinance  in  priority  to  other  applicants,  and  such 
registration  shall  have  the  same  date  as  the  application  for 
registration  in  Great  Britain;  provided  that  his  application  is 
made  within  four  months  from  his  applying  for  protection  in 
Great  Britain. 

Provided  that  nothing  in  this  section  contained  shall  entitle 
the  proprietor  of  the  trade  mark  to  recover  damages  for  in- 
fringements happening  prior  to  the  date  of  the  actual  registra- 
tion of  his  trade  mark  in  the  Colony. 


GOLD  COAST  COLONY  359 

(2)  The  use  in  the  Colony  during  the  period  aforesaid  of 
the  trade  mark  shall  not  invalidate  the  registration  of  the  trade 
mark. 

(3)  The  application  for  the  registration  of  a  trade  mark 
under  this  section  must  be  made  in  the  same  manner  as  an 
ordinary  application  under  this  Ordinance.    Provided  that  any 
trade  mark,  the  registration  of  which  has  been  duly  obtained  in 
Great  Britain,  may  be  registered  under  this  Ordinance. 

Powers  of  Customs  authorities  to  detain  goods  in  certain  cases 

63.  Any  person  who  has  duly  registered  his  trade  mark 
in  respect  of  any  goods  in  Great  Britain  may  by  himself,  his 
agent  or  representative  in  the  Colony,  on  giving  notice  in  writ- 
ing to  the  Chief  Customs  Officer,  Supervisor  or  other  proper 
Officer  of  Customs,  that  goods  bearing  a  mark  so  nearly  resem- 
bling his  trade  mark  as  to  be  well  calculated  to  deceive  are  being 
imported  into  the  Colony,  cause  the  said  goods  to  be  detained 
by  such  Chief  Customs  Officer,  Supervisor  or  other  proper  Of- 
ficer of  Customs  until  the  rights  of  the  matter  have  been  deter- 
mined according  to  law :  Provided  that  any  such  informant  shall 
reimburse  to  the  Chief  Customs  Officer,  Supervisor  or  other 
proper  Officer  of  Customs  all  expenses  and  damages  incurred  in 
respect  of  such  detention  made  on  his  information,  and  of  any 
proceedings  consequent  on  such  detention. 

Offences 

64.  (1)  If  any  person  makes  or  causes  to  be  made  a  false 
entry  in  the  register  kept  under  this  Ordinance,  or  a  writing 
falsely  purporting  to  be  a  copy  of  an  entry  in  such  register,  or 
produces,  or  tenders,  or  causes  to  be  produced  or  tendered  in 
evidence  any  such  writing,  knowing  the  entry  or  writing  to  be 
false,  he  shall  be  guilty  of  an  offence  and  on  conviction  shall  be 
liable  to  penal  servitude  for  a  term  of  not  more  than  seven 
years  nor  less  than  three  years  or  to  imprisonment  for  a  term 
not  exceeding  two  years,  with  or  without  hard  labour,  and  such 
offence  shall  be  tried  on  information. 

(2)  Any  person  who  represents  any  trade  mark  as  regis- 
tered, which  is  not  so,  shall  be  guilty  of  an  offence,  and  liable  on 
conviction  to  a  penalty  not  exceeding  five  pounds. 

A  person  shall  be  deemed,  for  the  purposes  of  this  section, 
to  represent  that  a  trade  mark  is  registered  if  he  uses  in  con- 
nexion with  the  trade  mark  the  word  " registered"  or  any  word 
or  words  expressing  or  implying  that  registration  has  been  ob- 
tained for  the  trade  mark. 

(3)  If  any  person,  without  the  authority  of  His  Majesty, 
uses  in  connexion  with  any  trade,  business,  calling  or  profes- 


360  GOLD  COAST  COLONY 

sion,  the  Royal  Arms  (or  arms  so  closely  resembling  the  same 
as  to  be  calculated  to  deceive)  in  such  manner  as  to  be  calculated 
to  lead  to  the  belief  that  he  is  duly  authorized  so  to  use  the 
Royal  Arms,  or  if  any  person  without  the  authority  of  His 
Majesty  or  of  a  member  of  the  Royal  Family,  uses  in  connexion 
with  any  trade,  business,  calling,  or  profession  any  device,  em- 
blem, or  title  in  such  manner  as  to  be  calculated  to  lead  to  the 
belief  that  he  is  employed  by  or  supplies  goods  to  His  Majesty 
or  such  member  of  the  Royal  Family,  he  shall  be  guilty  of  an 
offence  and  liable  on  conviction  to  a  penalty  not  exceeding 
twenty  pounds :  Provided  that  nothing  in  this  sub-section  shall 
be  construed  as  affecting  the  right,  if  any,  of  the  proprietor  of 
a  trade  mark  containing  any  such  arms,  device,  emblem,  or  title 
to  continue  to  use  such  trade  mark.  , 

COSTS 
Supreme  Court.    Jurisdiction  and  practice 

65.  In  all  appeals  and  in  other  matters,  civil  or  criminal, 
so  far  as  the  same  may  be  applicable  the  provisions  of  the  Su- 
preme Court  Ordinance  and  the  practice  and  procedure  there- 
under shall  extend  and  apply  to  all  proceedings  under  thia 
Ordinance. 

Offences.   How  tried 

66.  All  offences  under  this  Ordinance  [with  the  exception 
of  that  contained  in  section  sixty-four  (1)]  shall  be  tried  and 
punishable  before  a  Police  Magistrate  or  a  District  Commis- 
sioner. 

INTERNATIONAL  AND  INTERCOLONIAL  ARRANGEMENTS 
International  arrangements.     Priority  registration 

67.  (1)  If  His  Majesty  is  pleased  by  Order  in  Council  to 
apply  the  provisions  of  section  ninety-one  of  the  Imperial  Act 
entitled  "The  Patents  and  Designs  Act,  1907,"*  to  the  Colony, 
then  any  person  who  has  applied  for  protection  for  any  trade 
mark  in  any  foreign  state  with  the  Government  of  which  His 
Majesty  has  made  an  arrangement  under  the  said  section  for 
mutual  protection  of  trade  marks,  shall  be  entitled  to  registra- 
tion of  his  trade  mark  under  this  Ordinance  in  priority  to  other 
applicants,  and  such  registration  shall  take  effect  from  the  same 
date  as  the  date  of  the  application  in  such  foreign  State. 

(2)  Every  application  for  the  registration  of  a  trade  mark 
under  this  section  shall  be  made  within  four  months  from  the 
date -of  the  application  for  protection  in  such  foreign  State. 

(3)  Nothing  in  this  section  contained  shall  entitle  the  pro- 

*  For  provisions  in  question,  see  Great  Britain :    Patents  and  Designs  Act,  1907, 
Section  91. 


GOLD  COAST  COLONY  361 

prietor  of  the  trade  mark  to  recover  damages  for  infringements 
happening  prior  to  the  date  of  the  actual  registration  of  his 
trade  mark  in  the  Colony. 

(4)  The  use  in  the  Colony  during  the  period  aforesaid  of 
the  trade  mark  shall  not  invalidate  the  registration  thereof. 

(5)  The  application  for  the  registration  of  a  trade  mark 
under  this  section  shall  be  made  in  the  same  manner  as  an 
ordinary  application  under  this  Ordinance.    Provided  that  any 
trade  mark  the  registration  of  which  has  been  duly  applied  for 
in  the  country  of  origin  may  be  registered  under  this  Ordinance. 

(6)  The  provisions  of  this  section  shall  apply  only  in  the 
case  of  those  foreign  States  with  respect  to  which  His  Majesty 
shall  from  time  to  time  by  Order  in  Council  declare  the  pro- 
vision of  the  aforesaid  Section  ninety-one  of  the  Patents  and 
Designs  Act,  1907,  to  be  applicable,  and  so  long  only  in  the  case 
of  each  State  as  such  Order  continues  in  force  with  respect  to 
that  State. 

Intercolonial  Arrangements 

68.  (1)  Whenever  it  appears  to  the  Governor  in  Council 
that  the  legislature  of  any  British  Possession  has  made  satis- 
factory provision  for  the  protection  in  such  Possession  of  trade 
marks  registered  in  the  Colony,  the  Governor  in  Council  may 
by  Order  apply  all  or  any  of  the  provisions  of  the  last  preceding 
section  of  this  Ordinance  with  such  variations  or  additions  as 
may  seem  fit  to  trade  marks  registered  in  such  British  Pos- 
session. 

(2)  An  Order  in  Council  under  this  section  shall,  from  a 
date  to  be  mentioned  in  the  Order,  take  effect  as  if  its  provisions 
had  been  contained  in  this  Ordinance,  but  the  Governor  in  Coun- 
cil may  revoke  such  Order. 

GENERAL 
Provisions  as  to  Public  Holidays 

69.  Whenever  the  last  day  fixed  by  this  Ordinance,  or  by 
any  rule  for  the  time  being  in  force,  for  leaving  any  document 
with,  or  paying  any  fee  to  the  Registrar,  shall  fall  on  a  Sunday 
or  public  holiday,  it  shall  be  lawful  to  leave  such  document  or 
to  pay  such  fee  on  the  day  next  following  such  Sunday  or  public 
holiday  or  holidays,  if  two  or  more  of  them  occur  consecutively. 

Infants,  Lunatics,  Etc. 

70.  If  any  person  is,  by  reason  of  infancy,  lunacy  or  other 
inability,  incapable  of  making  any  affidavit  or  doing  anything 
required  or  permitted  by  this  Ordinance  or  by  any  rules  made 
under  the  authority  of  this  Ordinance,  then  the  guardian  of  such 
incapable  person,  or  if  there  be  none,  any  person  appointed  by 


362  GOLD  COAST  COLONY 

any  Court  possessing  jurisdiction  in  respect  of  the  property  of 
incapable  persons  upon  the  petition  of  any  person  on  behalf  of 
such  incapable  person,  or  any  other  person  interested  in  the 
making  of  such  affidavit  or  doing  such  thing,  may  make  such 
affidavit,  or  an  affidavit  as  nearly  corresponding  thereto  as  cir- 
cumstances may  permit,  and  do  such  thing  in  the  name  and  on 
behalf  of  such  incapable  person,  and  all  acts  done  by  such  sub- 
stitute shall,  for  the  purposes  of  this  Ordinance,  be  as  effectual 
as  if  done  by  the  person  for  whom  he  is  substituted. 

REPEAL 

Repeal  of  No.  2  of  1900 
71.    The  Trade  Marks  Ordinance,  1900,  is  hereby  repealed. 


GREAT  BRITAIN 

TEADE  MARKS  ACT  [OF  AUGUST  11],  1905* 

CHAPTER  15 
Short  Title 

1.  This  Act  may  be  cited  as  the  Trade  Marks  Act,  1905. 

Commencement  of  Act 

2.  This  Act  shall,  save  as  otherwise  expressly  provided, 
come  into  operation  on  the  first  day  of  April  one  thousand  nine 
hundred  and  six. 

PART  I 

DEFINITIONS 

3.  In  and  for  the  purposes  of  this  Act  (unless  the  context 
otherwise  requires) : 

A  "mark"  shall  include  a  device,  brand,  heading,  label, 
ticket,  name,  signature,  word,  letter,  numeral,  or  any  combina- 
tion thereof: 

A  " trade  mark"  shall  mean  a  mark  used  or  proposed  to  be 
used  upon  or  in  connexion  with  goods  for  the  purpose  of  indi- 
cating that  they  are  the  goods  of  the  proprietor  of  such  trade 
mark  by  virtue  of  manufacture,  selection,  certification,  dealing 
with,  or  offering  for  sale : 

A  ' ' registrable  trade  mark"  shall  mean  a  trade  mark  which 
is  capable  of  registration  under  the  provisions  of  this  Act : 

"The  register"  shall  mean  the  register  of  trade  marks  kept 
under  the  provisions  of  this  Act : 

A  "registered  trade  mark"  shall  mean  a  trade  mark  which 
is  actually  upon  the  register : 

"Prescribed"  shall  mean,  in  relation  to  proceedings  before 
the  Court,  prescribed  by  rules  of  court,  and  in  other  cases,  pre- 
scribed by  this  Act  or  the  Rules  thereunder: 

"The  Court"  shall  mean  (subject  to  the  provisions  for  Scot- 
land, Ireland,  and  the  Isle  of  Man)  His  Majesty's  High  Court 
of  Justice  in  England. 

REGISTER  OP  TRADE  MARKS 

4.  There  shall  be  kept  at  the  Patent  Office  for  the  purposes 
of  this  Act  a  book  called  the  Register  of  Trade  Marks,  wherein 

*  Amended  by  Trade  Marks  Act  [of  December  23],  1919— rwhich  see — as 
to  the  following  sections  specified  in  Second  Schedule :  Sec.  12,  subsections  (2) 
and  (4);  Sec.  13;  Sec.  14,  subsections  (4),  (5),  (6),  and  (10);  Sec.  16;  Sec.  21; 
Sec.  22;  Sec.  23;  Sec.  24;  Sec.  33  (see  Art.  11,  instead  of  Second  Schedule); 
Sec.  34;  Sec.  41;  Sec.  43;  Sec.  62;  and  Sec.  63. 


364  GREAT  BRITAIN 

shall  be  entered  all  registered  trade  marks  with  the  names  and 
addresses  of  their  proprietors,  notifications  of  assignments  and 
transmissions,  disclaimers,  conditions,  limitations,  and  such 
other  matters  relating  to  such  trade  marks  as  may  from  time  to 
time  be  prescribed.  The  register  shall  be  kept  under  the  con- 
trol and  management  of  the  Comptroller-General  of  Patents, 
Designs,  and  Trade  Marks,  who  is  in  this  Act  referred  to  as 
the  Registrar. 

Trust  not  to  be  entered  on  register 

5.  There  shall  not  be  entered  in  the  register  any  notice  of 
any  trust  expressed,  implied,  or  constructive,  nor  shall  any  such 
notice  be  receivable  by  the  Registrar. 

Incorporation  of  existing  register 

6.  The  register  of  trade  marks  existing  at  the  date  of  the 
commencement  of  this  Act,  and  all  registers  of  trade  marks  kept 
under  previous  Acts,  which  are  deemed  part  of  the  same  book 
as  such  register,  shall  be  incorporated  with  and  form  part  of 
the  register.    Subject  to  the  provisions  of  sections  thirty-six 
and  forty-one  of  this  Act  the  validity  of  the  original  entry  of 
any  trade  mark  upon  the  registers  so  incorporated  shall  be  de- 
termined in  accordance  with  the  statutes  in  force  at  the  date 
of  such  entry,  and  such  trade  mark  shall  retain  its  original  date, 
but  for  all  other  purposes  it  shall  be  deemed  to  be  a  trade  mark 
registered  under  this  Act. 

Inspection  of  and  extract  from  register 

7.  The  register  kept  under  this  Act  shall  at  all  convenient 
times  be  open  to  the  inspection  of  the  public,  subject  to  such 
regulations  as  may  be  prescribed;  and  certified  copies,  sealed 
with  the  seal  of  the  Patent  Office,  of  any  entry  in  any  such  regis- 
ter shall  be  given  to  any  person  requiring  the  same  on  payment 
of  the  prescribed  fee. 

REGISTBABLB  TRADE  MABKS 
Trade  mark  must  be  for  particular  goods 

8.  A  trade  mark  must  be  registered  in  respect  of  particu- 
lar goods  or  classes  of  goods. 

Registrable  trade  marks 

9.  A  registrable  trade  mark  must  contain  or  consist  of  at 
least  one  of  the  following  essential  particulars : 

(1)  The  name  of  a  company,  individual,  or  firm  represented 
in  a  special  or  particular  manner ; 

(2)  The  signature  of  the  applicant  for  registration  or  some 
predecessor  in  his  business ; 

(3)  An  invented  word  or  invented  words; 

(4)  A  word  or  words  having  no  direct  reference  to  the 


GREAT  BRITAIN  365 

character  or  quality  of  the  goods,  and  not  being  according  to 
its  ordinary  signification  a  geographical  name  or  a  surname ; 

(5)  Any  other  distinctive  mark,  but  a  name,  signature,  or 
word  or  words,  other  than  such  as  fall  within  the  descriptions 
in  the  above  paragraphs  (1),  (2),  (3),  and  (4),  shall  not,  except 
by  order  of  the  Board  of  Trade  or  the  Court,  be  deemed  a  dis- 
tinctive mark : 

Provided  always  that  any  special  or  distinctive  word  or 
words,  letter,  numeral,  or  combination  of  letters  or  numerals 
used  as  a  trade  mark  by  the  applicant  or  his  predecessors  in 
business  before  the  thirteenth  day  of  August  one  thousand  eight 
hundred  and  seventy-five,  which  has  continued  to  be  used  (either 
in  its  original  form  or  with  additions  or  alterations  not  sub- 
stantially affecting  the  identity  of  the  same)  down  to  the  date 
of  the  application  for  registration  shall  be  registrable  as  a 
trade  mark  under  this  Act. 

For  the  purposes  of  this  section  "  distinctive "  shall  mean 
adapted  to  distinguish  the  goods  of  the  proprietor  of  the  trade 
mark  from  those  of  other  persons. 

In  determining  whether  a  trade  mark  is  so  adapted,  the 
tribunal  may,  in  the  case  of  a  trade  mark  in  actual  use,  take 
into  consideration  the  extent  to  which  such  user  has  rendered 
such  trade  mark  in  fact  distinctive  for  the  goods  with  respect 
to  which  it  is  registered  or  proposed  to  be  registered. 
Coloured  trade  marks 

10.  A  trade  mark  may  be  limited  in  whole  or  in  part  to 
one  or  more  specified  colours,  and  in  such  case  the  fact  that  it 
is  so  limited  shall  be  taken  into  consideration  by  any  tribunal 
having  to  decide  on  the  distinctive  character  of  such  trade  mark. 
If  and  so  far  as  a  trade  mark  is  registered  without  limitation 
of  colour  it  shall  be  deemed  to  be  registered  for  all  colours. 

Restriction  on  Registration 

11.  It  shall  not  be  lawful  to  register  as  a  trade  mark  or 
part  of  a  trade  mark  any  matter  the  use  of  which  would  by 
reason  of  its  being  calculated  to  deceive  or  otherwise  be  dis- 
entitled to  protection  in  a  court  of  justice,  or  would  be  contrary 
to  law  or  morality,  or  any  scandalous  design. 

REGISTRATION  OF  TRADE  MARKS 
Application  for  registration 

12.  (1)  Any  person  claiming  to  be  the  proprietor  of  a 
trade  mark  who  is  desirous  of  registering  the  same  must  apply 
in  writing  to  the  Registrar  in  the  prescribed  manner. 

(2)  Subject  to  the  provisions  of  this  Act,  the  Registrar  may 
refuse  such  application,  or  may  accept  it  absolutely  or  subject 


366  GREAT  BRITAIN 

to  conditions,  amendments,  or  modifications. 

(3)  In  case  of  any  such  refusal  or  conditional  acceptance 
the  Registrar  shall,  if  required  by  the  applicant,  state  in  writing 
the  grounds  of  his  decision  and  the  materials  used  by  him  in 
arriving  at  the  same,  and  such  decision  shall  be  subject  to  appeal 
to  the  Board  of  Trade  or  to  the  Court  at  the  option  of  the 
applicant. 

(4)  An  appeal  under  this  section  shall  be  made  in  the  pre- 
scribed manner,  and  on  such  appeal  the  Board  of  Trade  or  the 
Court,  as  the  case  may  be,  shall,  if  required,  hear  the  applicant 
and  the  Registrar,  and  shall  make  an  order  determining  whether, 
and  subject  to  what  conditions,  amendments,  or  modifications, 
if  any,  the  application  is  to  be  accepted. 

(5)  Appeals  under  this  section  shall  be  heard  on  the  ma- 
terials so  stated  by  the  Registrar  to  have  been  used  by  him  in 
arriving  at  his  decision,  and  no  further  grounds  of  objection  to 
the  acceptance  of  the  application  shall  be  allowed  to  be  taken  by 
the  Registrar,  other  than  those  stated  by  him,  except  by  leave 
of  the  tribunal  hearing  the  appeal.    Where  any  further  grounds 
of  objection  are  taken,  the  applicant  shall  be  entitled  to  with- 
draw his  application  without  payment  of  costs  on  giving  notice 
as  prescribed. 

(6)  The  Registrar  or  the  Board  of  Trade  or  the  Court,  as 
the  case  may  be,  may  at  any  time,  whether  before  or  after  ac- 
ceptance, correct  any  error  in  or  in  connection  with  the  appli- 
cation, or  may  permit  the  applicant  to  amend  his  application 
upon  such  terms  as  they  may  think  fit. 

Advertisement  of  application 

13.  When  an  application  for  registration  of  a  trade  mark 
has  been  accepted,  whether  absolutely  or  subject  to  conditions, 
the  Registrar  shall,  as  soon  as  may  be  after  such  acceptance, 
cause  the  application  as  accepted  to  be  advertised  in  the  pre- 
scribed manner.    Such  advertisement  shall  set  forth  all  condi- 
tions subject  to  which  the  application  has  been  accepted. 

Opposition  to  registration 

14.  (1)  Any  person  may,  within  the  prescribed  time  from 
the  date  of  the  advertisement  of  an  application  for  the  registra- 
tion of  a  trade  mark,  give  notice  to  the  Registrar  of  opposition 
to  such  registration. 

(2)  Such  notice  shall  be  given  in  writing  in  the  prescribed 
manner,  and  shall  include  a  statement  of  the  grounds  of  oppo- 
sition. 

(3)  The  Registrar  shall  send  a  copy  of  such  notice  to  the 
applicant,  and  within  the  prescribed  time  after  the  receipt  of 


GREAT  BRITAIN  367 

such  notice,  the  applicant  shall  send  to  the  Registrar,  in  the  pre- 
scribed manner,  a  counter-statement  of  the  grounds  on  which  he 
relies  for  his  application,  and,  if  he  does  not  do  so,  he  shall  be 
deemed  to  have  abandoned  his  application. 

(4)  If  the  applicant  sends  such  counter-statement,  the  Reg- 
istrar shall  furnish  a  copy  thereof  to  the  persons  giving  notice 
of  opposition,  and  shall,  after  hearing  the  parties,  if  so  required, 
and  considering  the  evidence,  decide  whether,  and  subject  to 
what  conditions,  registration  is  to  be  permitted. 

(5)  The  decision  of  the  Registrar  shall  be  subject  to  appeal 
to  the  Court  or,  with  the  consent  of  the  parties,  to  the  Board 
of  Trade. 

(6)  An  appeal  under  this  section  shall  be  made  in  the  pre- 
scribed manner,  and  on  such  appeal  the  Board  of  Trade  or  the 
Court,  as  the  case  may  be,  shall,  if  required,  hear  the  parties  and 
the  Registrar,  and  shall  make  an  order  determining  whether, 
and  subject  to  what  conditions,  if  any,  registration  is  to  be  per- 
mitted. 

(7)  On  the  hearing  of  any  such  appeal  any  party  may  either 
in  the  manner  prescribed  or  by  special  leave  of  the  tribunal 
bring  forward  further  material  for  the  consideration  of  the 
tribunal. 

(8)  In  proceedings  under  this  section  no  further  grounds 
of  objection  to  the  registration  of  a  trade  mark  shall  be  allowed 
to  be  taken  by  the  opponent  or  the  Registrar  other  than  those 
stated  by  the  opponent  as  herein-above  provided  except  by  leave 
of  the  tribunal  hearing  the  appeal.    Where  any  further  grounds 
of  objection  are  taken  the  applicant  shall  be  entitled  to  withdraw 
his  application  without  payment  of  the  costs  of  the  opponent  on 
giving  notice  as  prescribed. 

(9)  In  any  appeal  under  this  section,  the  tribunal  may, 
after  hearing  the  Registrar,  permit  the  trade  mark  proposed  to 
be  registered  to  be  modified  in  any  manner  not  substantially 
affecting  the  identity  of  such  trade  mark,  but  in  such  case  the 
trade  mark  as  so  modified  shall  be  advertised  in  the  prescribed 
manner  before  being  registered. 

(10)  The  Registrar,  or  in  the  case  of  an  appeal  to  the  Board 
of  trade  the  Board  of  Trade,  shall  have  power  in  proceedings 
under  this  section  to  award  to  any  party  such  costs  as  they  may 
consider  reasonable,  and  to  direct  how  and  by  what  parties  they 
are  to  be  paid. 

(11)  If  a  party  giving  notice  of  opposition  or  of  appeal 
neither  resides  nor  carries  on  business  in  the  United  Kingdom, 
the  tribunal  may  require  such  party  to  give  security  for  costs  of 
the  proceedings  before  it  relative  to  such  opposition  or  appeal, 


368  GREAT  BRITAIN 

and  in  default  of  such  security  being  duly  given  may  treat  the 
opposition  or  appeal  as  abandoned. 

Disclaimers 

15.  If  a  trade  mark  contains  parts  not  separately  regis- 
tered by  the  proprietor  as  trade  marks,  or  if  it  contains  matter 
common  to  the  trade  or  otherwise  of  a  non-distinctive  character, 
the  Registrar  or  the  Board  of  Trade  or  the  Court,  in  deciding 
whether  such  trade  mark  shall  be  entered  or  shall  remain  upon 
the  register,  may  require,  as  a  condition  of  its  being  upon  the 
register,  that  the  proprietor  shall  disclaim  any  right  to  the 
exclusive  use  of  any  part  or  parts  of  such  trade  mark,  or  of 
all  or  any  portion  of  such  matter,  to  the  exclusive  use  of  which 
they  hold  him  not  to  be  entitled,  or  that  he  shall  make  such 
other  disclaimer  as  they  may  consider  needful  for  the  purpose 
of  defining  his  rights  under  such  registration :  Provided  always 
that  no  disclaimer  upon  the  register  shall  affect  any  rights  of 
the  proprietor  of  a  trade  mark  except  such  as  arise  out  of  the 
registration  of  the  trade  mark  in  respect  of  which  the  disclaimer 
is  made. 

Date  of  registration 

16.  When  an  application  for  resignation  of  a  trade  mark 
has  been  accepted  and  has  not  been  opposed,  and  the  time  for 
notice  of  opposition  has  expired,  or  having  been  opposed  the  op- 
position has  been  decided  in  favour  of  the  applicant,  the  Regis- 
trar shall,  unless  the  Board  of  Trade  otherwise  direct,  register 
the  said  trade  mark,  and  the  trade  mark,  when  registered,  shall 
be  registered  as  of  the  date  of  the  application  for  registration, 
and  such  date  shall  be  deemed  for  the  purposes  of  this  Act  to 
be  the  date  of  registration. 

Certificate  of  registration 

17.  On  the  registration  of  a  trade  mark  the  Registrar  shall 
issue  to  the  applicant  a  certificate  in  the  prescribed  form  of  the 
registration  of  such  trade  mark  under  the  hand  of  the  Regis- 
trar, and  sealed  with  the  seal  of  the  Patent  Office. 

Non-completion  of  registration 

18.  Where  registration  of  a  trade  mark  is  not  completed 
within  twelve  months  from  the  date  of  the  application  by  reason 
of  default  on  the  part  of  the  applicant,  the  Registrar  may,  after 
giving  notice  of  the  non-completion  to  the  applicant  in  writing 
in  the  prescribed  manner,  treat  the  application  as  abandoned 
unless  it  is  completed  within  the  time  specified  in  that  behalf 
in  such  notice. 

IDENTICAL  TRADE  MARKS 

19.  Except  by  order  of  the  Court  or  in  the  case  of  trade 


GREAT  BRITAIN  369 

marks  in  use  before  the  thirteenth  day  of  August  one  thousand 
eight  hundred  and  seventy-five,  no  trade  mark  shall  be  regis- 
tered in  respect  of  any  goods  or  description  of  goods  which  is 
identical  with  one  belonging  to  a  different  proprietor  which  is 
already  on  the  register  with  respect  to  such  goods  or  description 
of  goods,  or  so  nearly  resembling  such  a  trade  mark  as  to  be 
calculated  to  deceive. 

Rival  claims  to  identical  marks 

20.  Where  each  of  several  persons  claims  to  be  proprietor 
of  the  same  trade  mark,  or  of  nearly  identical  trade  marks  in 
respect  of  the  same  goods  or  description  of  goods,  and  to  be 
registered  as  such  proprietor,  the  Register  may  refuse  to  regis- 
ter any  of  them  until  their  rights  have  been  determined  by  the 
Court,  or  have  been  settled  by  agreement  in  a  manner  approved 
by  him  or  (on  appeal)  by  the  Board  of  Trade. 

Concurrent  user 

21.  In  case  of  honest  concurrent  user  or  of  other  special 
circumstances  which,  in  the  opinion  of  the  Court,  make  it  proper 
so  to  do,  the  Court  may  permit  the  registration  of  the  same  trade 
mark,  or  of  nearly  identical  trade  marks,  for  the  same  goods  or 
description  of  goods  by  more  than  one  proprietor  subject  to 
such  conditions  and  limitations,  if  any,  as  to  mode  or  place  of 
user  or  otherwise,  as  it  may  think  it  right  to  impose. 

Assignment  and  transmission  of  trade  marks 

22.  A  trade  mark  when  registered  shall  be  assigned  and 
transmitted  only  in  connection  with  the  goodwill  of  the  business 
concerned  in  the  goods  for  which  it  has  been  registered  and 
shall  be  determinable  with  that  goodwill.    But  nothing  in  this 
section  contained  shall  be  deemed  to  affect  the  right  of  the  pro- 
prietor of  a  registered  trade  mark  to  assign  the  right  to  use 
the  same  in  any  British  possession  or  protectorate  or  foreign 
country  in  connection  with  any  goods  for  which  it  is  registered 
together  with  the  goodwill  of  the  business  therein  in  such  goods. 

Apportionment  of  marks  on  dissolution  of  partnership 

23.  In  any  case  where  from  any  cause,  whether  by  reason 
of  dissolution  of  partnership  or  otherwise,  a  person  ceases  to 
carry  on  business,  and  the  goodwill  of  such  person  does  not  pass 
to  one  successor  but  is  divided,  the  Registrar  may  (subject  to 
the  provisions  of  this  Act  as  to  associated  trade  marks),  on  the 
application  of  the  parties  interested,  permit  an  apportionment 
of  the  registered  trade  marks  of  the  person  among  the  persons 
in  fact  continuing  the  business,  subject  to  such  conditions  and 
modifications,  if  any,  as  he  may  think  necessary  in  the  public 
interest.    Any  decision  of  the  Registrar  under  this  section  shall 


370  GREAT  BRITAIN 

be  subject  to  appeal  to  the  Board  of  Trade. 
ASSOCIATED  TRADE  MARKS 

24.  If  application  be  made  for  the  registration  of  a  trade 
mark  so  closely  resembling  a  trade  mark  of  the  applicant  already 
on  the  register  for  the  same  goods  or  description  of  goods  as  to 
be  calculated  to  deceive  or  cause  confusion  if  used  by  a  person 
other  than  the  applicant,  the  tribunal  hearing  the  application 
may  require  as  a  condition  of  registration  that  such  trade  marks 
shall  be  entered  on  the  register  as  associated  trade  marks. 

Combined  trade  marks 

25.  If  the  proprietor  of  a  trade  mark  claims  to  be  entitled 
to  the  exclusive  use  of  any  portion  of  such  trade  mark  sepa- 
rately he  may  apply  to  register  the  same  as  separate  trade 
marks.    Each  such  separate  trade  mark  must  satisfy  all  the  con- 
ditions and  shall  have  all  the  incidents  of  an  independent  trade 
mark,  except  that  when  registered  it  and  the  trade  mark  of 
which  it  forms  a  part  shall  be  deemed  to  be  associated  trade 
marks  and  shall  be  entered  on  the  register  as  such,  but  the  user 
of  the  whole  trade  mark  shall  for  the  purposes  of  this  Act  be 
deemed  to  be  also  a  user  of  such  registered  trade  marks  belong- 
ing to  the  same  proprietor  as  it  contains. 

Series  of  trade  marks 

26.  When  a  person  claiming  to  be  the  proprietor  of  several 
trade  marks  for  the  same  description  of  goods  which,  while 
resembling  each  other  in  the  material  particulars  thereof,  yet 
differ  in  respect  of — 

(a)  statements  of  the  goods  for  which  they  are  respectively 
used  or  proposed  to  be  used ;  or 

(b)  statements   of  number,   price,  quality,   or  names   of 
places;  or 

(c)  other  matter  of  a  non-distinctive  character  which  does 
not  substantially  affect  the  identity  of  the  trade  mark ;  or 

(d)  colour; 

seeks  to  register  such  trade  marks,  they  may  be  registered  as  a 
series  in  one  registration.  All  the  trade  marks  in  a  series  of 
trade  marks  so  registered  shall  be  deemed  to  be,  and  shall  be 
registered  as,  associated  trade  marks. 

Assignment  and  user  of  associated  trade  marks 

27.  Associated  trade  marks  shall  be  assignable  or  trans- 
missible only  as  a  whole  and  not  separately,  but  they  shall  for 
all  other  purposes  be  deemed  to  have  been  registered  as  separate 
trade  marks.   Provided  that  where  under  the  provisions  of  this 
Act  user  of  a  registered  trade  mark  is  required  to  be  proved  for 


GREAT  BRITAIN  371 

any  purpose,  the  tribunal  may,  if  and  so  far  as  it  shall  think 
right,  accept  user  of  an  associated  registered  trade  mark,  or  of 
the  trade  mark  with  additions  or  alterations  not  substantially 
affecting  its  identity,  as  an  equivalent  for  such  user. 

RENEWAL  OF  REGISTRATION 

Duration  of  registration 

28.  The  registration  of  a  trade  mark  shall  be  for  a  period 
of  fourteen  years,  but  may  be  renewed  from  time  to  time  in 
accordance  with  the  provisions  of  this  Act. 

Renewal  of  registration 

29.  The  Registrar  shall,  on  application  made  by  the  regis- 
tered proprietor  of  a  trade  mark  in  the  prescribed  manner  and 
within  the  prescribed  period,  renew  the  registration  of  such 
trade  mark  for  a  period  of  fourteen  years  from  the  expiration 
of  the  original  registration  or  of  the  last  renewal  of  registra- 
tion, as  the  case  may  be,  which  date  is  herein  termed  ''the  ex- 
piration of  the  last  registration." 

Procedure  on  expiry  of  period  of  registration 

30.  At  the  prescribed  time  before  the  expiration  of  the  last 
registration  of  a  trade  mark,  the  Registrar  shall  send  notice  in 
the  prescribed  manner  to  the  registered  proprietor  at  his  regis- 
tered address  of  the  date  at  which  the  existing  registration  will 
expire  and  the  conditions  as  to  payment  of  fees  and  otherwise 
upon  which  a  renewal  of  such  registration  may  be  obtained,  and 
if  at  the  expiration  of  the  time  prescribed  in  that  behalf  such 
conditions  have  not  been  duly  complied  with,  the  Registrar  may 
remove  such  trade  mark  from  the  register,  subject  to  such  con- 
ditions (if  any)  as  to  its  restoration  to  the  register  as  may  be 
prescribed. 

Status  of  unrenetved  trade  mark 

31.  Where  a  trade  mark  has  been  removed  from  the  regis- 
ter for  non-payment  of  the  fee  for  renewal,  such  trade  mark 
shall,  nevertheless,  for  the  purpose  of  any  application  for  regis- 
tration during  one  year  next  after  the  date  of  such  removal,  be 
deemed  to  be  a  trade  mark  which  is  already  registered,  unless 
it  is  shown  to  the  satisfaction  of  the  Registrar  that  there  had 
been  no  bona  fide  trade  user  of  such  trade  mark  during  the  two 
years  immediately  preceding  such  removal. 

CORRECTION  AND  RECTIFICATION  OF  THE  REGISTER 

32.  The  Registrar  may,  on  request  made  in  the  prescribed 
manner  by  the  registered  proprietor  or  by  some  person  entitled 
by  law  to  act  in  his  name : 

(1)  Correct  any  error  in  the  name  or  address  of  the  regis- 
tered proprietor  of  a  trade  mark;  or 


372  GREAT  BRITAIN 

(2)  Enter  any  change  in  the  name  or  address  of  the  person 
who  is  registered  as  proprietor  of  a  trade  mark ;  or 

(3)  Cancel  the  entry  of  a  trade  mark  on  the  register;  or 

(4)  Strike  out  any  goods  or  classes  of  goods  from  those  for 
which  a  trade  mark  is  registered ;  or 

(5)  Enter  a  disclaimer  or  memorandum  relating  to  a  trade 
mark  which  does  not  in  any  way  extend  the  rights  given  by  the 
existing  registration  of  such  trade  mark. 

Any  decision  of  the  Registrar  under  this  section  shall  be 
subject  to  appeal  to  the  Board  of  Trade. 

Registration  of  assignments,  etc. 

33.  Subject  to  the  provisions  of  this  Act  where  a  person 
becomes  entitled  to  a  registered  trade  mark  by  assignment, 
tranmission,  or  other  operation  of  law,  the  Registrar  shall,  on 
request  made  in  the  prescribed  manner,  and  on  proof  of  title  to 
his  satisfaction,  cause  the  name  and  address  of  such  person  to 
be  entered  on  the  register  as  proprietor  of  the  trade  mark.  Any 
decision  of  the  Registrar  under  this  section  shall  be  subject  to 
appeal  to  the  Court  or,  with  the  consent  of  the  parties,  to  the 
Board  of  Trade. 

Alteration  of  registered  trade  mark 

34.  The  registered  proprietor  of  any  trade  mark  may  ap- 
ply in  the  prescribed  manner  to  the  Registrar  for  leave  to  add 
to  or  alter  such  trade  mark  in  any  manner  not  substantially 
affecting  the  identity  of  the  same,  and  the  Registrar  may  refuse 
such  leave  or  may  grant  the  same  on  such  terms  as  he  may  think 
fit,  but  any  such  refusal  or  conditional  permission  shall  be  sub- 
ject to  appeal  to  the  Board  of  Trade.    If  leave  be  granted,  the 
trade  mark  as  altered  shall  be  advertised  in  the  prescribed 
manner. 

Rectification  of  register 

35.  Subject  to  the  provisions  of  this  Act — 

(1)  The  Court  may  on  the  application  in  the  prescribed 
manner  of  any  person  aggrieved  by  the  non-insertion  in  or 
omission  from  the  register  of  any  entry,  or  by  any  entry  made 
in  the  register  without  sufficient  cause,  or  by  any  entry  wrongly 
remaining  on  the  register,  or  by  any  error  or  defect  in  any 
entry  in  the  register,  make  such  order  for  making,  expunging, 
or  varying  such  entry,  as  it  may  think  fit : 

(2)  The  Court  may  in  any  proceeding  under  this  section 
decide  any  question  that  it  may  be  necessary  or  expedient  to 
decide  in  connection  with  the  rectification  of  the  register : 

(3)  In  case  of  fraud  in  the  registration  or  transmission  of 
a  registered  trade  mark,  the  Registrar  may  himself  apply  to 


GREAT  BRITAIN  373 

the  Court  under  the  provisions  of  this  section: 

(4)  Any  order  of  the  Court  rectifying  the  register  shall 
direct  that  notice  of  the  rectification  shall  be  served  upon  the 
Registrar  in  the  prescribed  manner  who  shall  upon  receipt  of 
such  notice  rectify  the  register  accordingly. 

Trade  marks  registered  under  previous  Acts 

36.  No  trade  mark  which  is  upon  the  register  at  the  com- 
mencement of  this  Act  and  which  under  this  act  is  a  registrable 
trade  mark  shall  be  removed  from  the  register  on  the  ground 
that  it  was  not  registrable  under  the  Acts  in  force  at  the  date 
of  its  registration.    But  nothing  in  this  section  contained  shall 
subject  any  person  to  any  liability  in  respect  of  any  act  or  thing 
done  before  the  commencement  of  this  Act  to  which  he  would 
not  have  been  subject  under  the  Acts  then  in  force. 

Non-user  of  trade  mark 

37.  A  registered  trade  mark  may,  on  the  application  to 
'the  court  of  any  person  aggrieved,  be  taken  off  the  register  in 
respect  of  any  of  the  goods  for  which  it  is  registered,  on  the 
ground  that  it  was  registered  by  the  proprietor  or  a  predecessor 
in  title  without  any  bona  fide  intention  to  use  the  same  in  con- 
nection with  such  goods,  and  there  has  in  fact  been  no  bona  fide 
user  of  the  same  in  connection  therewith,  or  on  the  ground  that 
there  has  been  no  bona  fide  user  of  such  trade  mark  in  connec- 
tion with  such  goods  during  the  five  years  immediately  preced- 
ing the  application,  unless  in  either  case  such  non-user  is  shown 
to  be  due  to  special  circumstances  in  the  trade,  and  not  to  any 
intention  not  to  use  or  to  abandon  such  trade  mark  in  respect 
of  such  goods. 

EFFECT  OF  REGISTRATION 
Powers  of  registered  proprietor 

38.  Subject  to  the  provisions  of  this  Act — 

(1)  The  person  for  the  time  being  entered  in  the  register 
as  proprietor  of  a  trade  mark  shall,  subject  to  any  rights  ap- 
pearing from  such  register  to  be  vested  in  any  other  person, 
have  power  to  assign  the  same,  and  to  give  effectual  receipts 
for  any  consideration  for  such  assignment: 

(2)  Any  equities  in  respect  of  a  trade  mark  may  be  en- 
forced in  like  manner  as  in  respect  of  any  other  personal 
property. 

Rights  of  proprietor  of  trade  mark 

39.  Subject  to  the  provisions  of  section  forty-one  of  this 
Act  and  to  any  limitations  and  conditions  entered  upon  the 
register,  the  registration  of  a  person  as  proprietor  of  a  trade 
mark  shall,  if  valid,  give  to  such  person  the  exclusive  right  to 


374  GBEAT  BRITAIN 

the  use  of  such  trade  mark  upon  or  in  connection  with  the  goods 
in  respect  of  which  it  is  registered :  Provided  always  that  where 
two  or  more  persons  are  registered  proprietors  of  the  same  (or 
substantially  the  same)  trade  mark  in  respect  of  the  same  goods 
no  rights  of  exclusive  user  of  such  trade  mark  shall  (except  so 
far  as  their  respective  rights  shall  have  been  denned  by  the 
Court)  be  acquired  by  any  one  of  such  persons  as  against  any 
other  by  the  registration  thereof,  but  each  of  such  persons  shall 
otherwise  have  the  same  rights  as  if  he  were  the  sole  registered 
proprietor  thereof. 

Registration  to  be  primd  facie  evidence  of  validity 

40.  In  all  legal  proceedings  relating  to  a  registered  trade 
mark  (including  applications  under  section  thirty-five  of  this 
Act)  the  fact  that  a  person  is  registered  as  proprietor  of  such 
trade  mark  shall  be  prima  facie  evidence  of  the  validity  of  the 
original  registration  of  such  trade  mark  and  of  all  subsequent 
assignments  and  transmissions  of  the  same. 

Registration  to  be  conclusive  after  seven  years 

41.  In  all  legal  proceedings  relating  to  a  registered  trade 
mark  (including  applications  under  section  thirty-five  of  this 
Act)  the  original  registration  of  such  trade  mark  shall  after  the 
expiration  of  seven  years  from  the  date  of  such  original  regis- 
tration (or  seven  years  from  the  passing  of  this  Act,  whichever 
shall  last  happen)  be  taken  to  be  valid  in  all  respects  unless  such 
original  registration  was  obtained  by  fraud,  or  unless  the  trade 
mark  offends  against  the  provisions  of  section  eleven  of  this 
Act: 

Provided  that  nothing  in  this  Act  shall  entitle  the  proprie- 
tor of  a  registered  trade  mark  to  interfere  with  or  restrain  the 
user  by  any  person  of  a  similar  trade  mark  upon  or  in  connec- 
tion with  goods  upon  or  in  connection  with  which  such  person 
has,  by  himself  or  his  predecessors  in  business,  continuously 
used  such  trade  mark  from  a  date  anterior  to  the  user  of  the 
first-mentioned  trade  mark  by  the  proprietor  thereof  or  his 
predecessors  in  business,  or  to  object  (on  such  user  being 
proved)  to  such  person  being  put  upon  the  register  for  such 
similar  trade  mark  in  respect  of  such  goods  under  the  provisions 
of  section  twenty-one  of  this  Act. 

Unregistered  trade  mark 

42.  No  person  shall  be  entitled  to  institute  any  proceeding 
to  prevent  or  to  recover  damages  for  the  infringement  of  an 
unregistered  trade  mark  unless  such  trade  mark  was  in  use  be- 
fore the  thirteenth  of  August  one  thousand  eight  hundred  and 
seventy-five,  and  has  been  refused  registration  under  this  Act. 


GREAT  BRITAIN  375 

The  Registrar  may,  on  request,  grant  a  certificate  that  such 
registration  has  been  refused. 

Infringement 

43.  In  an  action  for  the  infringement  of  a  trade  mark  the 
court  trying  the  question  of  infringement  shall  admit  evidence 
of  the  usages  of  the  trade  in  respect  to  the  get-up  of  the  goods 
for  which  the  trade  mark  is  registered,  and  of  any  trade  marks 
or  get-up  legitimately  used  in  connection  with  such  goods  by 
other  persons. 

User  of  name,  address,  or  description  of  goods 

44.  No  registration  under  this  Act  shall  interfere  with  any 
bona  fide  use  by  a  person  of  his  own  name  or  place  of  business 
or  that  of  any  of  his  predecessors  in  business,  or  the  use  by  any 
person  of  any  bona  fide  description  of  the  character  or  quality 
of  his  goods. 

"Passing-off"  action 

45.  Nothing  in  this  Act  contained  shall  be  deemed  to  affect 
rights  of  action  against  any  person  for  passing  off  goods  as 
those  of  another  person  or  the  remedies  in  respect  thereof. 

LEGAL.  PROCEEDINGS 

Certificate  of  validity 

46.  In  any  legal  proceeding  in  which  the  validity  of  the 
registration  of  a  registered  trade  mark  comes  into  question  and 
is  decided  in  favour  of  the  proprietor  of  such  trade  mark,  the 
court  may  certify  the  same,  and  if  it  so  certifies  then  in  any 
subsequent  legal  proceeding  in  which  such  validity  comes  into 
question  the  proprietor  of  the  said  trade  mark  on  obtaining  a 
final  order  or  judgment  in  his  favour  shall  have  his  full  costs, 
charges,  and  expenses  as  between  solicitor  and  client,  unless  in 
such  subsequent  proceeding  the  Court  certifies  that  he  ought  not 
to  have  the  same. 

Registrar  to  have  notice  of  proceeding  for  rectification 

47.  In  any  legal  proceeding  in  which  the  relief  sought 
includes  alteration  or  rectification  of  the  register,  the  Registrar 
shall  have  the  right  to  appear  and  be  heard,  and  shall  appear 
if  so  directed  by  the  Court.    Unless  otherwise  directed  by  the 
Court,  the  Registrar  in  lieu  of  appearing  and  being  heard  may 
submit  to  the  Court  a  statement  in  writing  signed  by  him,  giving 
particulars  of  the  proceedings  before  him  in  relation  to  the  mat- 
ter in  issue  or  of  the  grounds  of  any  decision  given  by  him 
affecting  the  same  or  of  the  practice  of  the  office  in  like  cases, 
or  of  such  other  matters  relevant  to  the  issues,  and  within  his 
knowledge  as  such  Registrar,  as  he  shall  think  fit,  and  such  state- 


376  GREAT  BRITAIN 

ment  shall  be  deemed  to  form  part  of  the  evidence  in  the  pro- 
ceeding. 

COSTS 
Costs  of  proceedings  before  the  Court 

48.  In  all  proceedings  before  the  Court  under  this  Act 
the  costs  of  the  Registrar  shall  be  in  the  discretion  of  the  Court, 
but  the  Registrar  shall  not  be  ordered  to  pay  the  costs  of  any 
other  of  the  parties. 

EVIDENCE 
Mode  of  giving  evidence 

49.  In  any  proceeding  under  this  Act  before  the  Board  of 
Trade  or  the  Registrar,  the  evidence  shall  be  given  by  statutory 
declaration  in  the  absence  of  directions  to  the  contrary,  but,  in 
any  case  in  which  it  shall  think  it  right  so  to  do,  the  tribunal 
may  (with  the  consent  of  the  parties)  take  evidence  viva  voce 
in  lieu  of  or  in  addition  to  evidence  by  declaration.    Any  such 
statutory  declaration  may  in  the  case  of  appeal  be  used  before 
the  Court  in  lieu  of  evidence  by  affidavit,  but  if  so  used  shall 
have  all  the  incidents  and  consequences  of  evidence  by  affidavit. 

In  case  any  part  of  the  evidence  is  taken  viva  voce  the 
Board  of  Trade  or  the  Registrar  shall  in  respect  of  requiring 
the  attendance  of  witnesses  and  taking  evidence  on  oath  be  in 
the  same  position  in  all  respects  as  an  Official  Referee  of  the 
Supreme  Court. 

Sealed  copies  to  be  evidence 

50.  Printed  or  written  copies  or  extracts  of  or  from  the 
register,  purporting  to  be  certified  by  the  Registrar  and  sealed 
with  the  seal  of  the  Patent  Office,  shall  be  admitted  in  evidence 
in  all  courts  in  His  Majesty's  dominions,  and  in  all  proceedings, 
without  further  proof  or  production  of  the  originals. 

Certificate  of  Registrar  to  be  evidence 

51.  A  certificate  purporting  to  be  under  the  hand  of  the 
Registrar  as  to  any  entry,  matter,  or  thing  which  he  is  author- 
ised by  this  Act,  or  rules  made  thereunder,  to  make  or  do,  shall 
be  prima  facie  evidence  of  the  entry  having  been  made,  and  of 
the  contents  thereof,  and  of  the  matter  or  thing  having  been 
done  or  not  done. 

Certificate  of  Board  of  Trade  to  be  evidence 

52.  (1)  All  documents  purporting  to  be  orders  made  by 
the  Board  of  Trade  and  to  be  sealed  with  the  seal  of  the  Board, 
or  to  be  signed  by  a  secretary  or  assistant  secretary  of  the 
Board,  or  by  any  person  authorised  in  that  behalf  by  the  Presi- 
dent of  the  Board,  shall  be  received  in  evidence,  and  shall  be 
deemed  to  be  such  orders  without  further  proof,  unless  the  con- 


GREAT  BRITAIN  377 

trary  is  shown. 

(2)  A  certificate,  signed  by  the  President  of  the  Board  of 
Trade,  that  any  order  made  or  act  done  is  the  order  or  act  of 
the  Board,  shall  be  conclusive  evidence  of  the  fact  so  certified. 

PART  II 

POWERS  AND  DUTIES  OF  REGISTRAR  OF  TRADE  MARKS 
Exercise  of  discretionary  power  by  Registrar 

53.  Where  any  discretionary  or  other  power  is  given  to 
the  Registrar  by  this  Act  or  rules  made  thereunder  he  shall  not 
exercise  that  power  adversely  to  the  applicant  for  registration 
or  the  registered  proprietor  of  the  trade  mark  in  question  with- 
out (if  duly  required  so  to  do  within  the  prescribed  time)  giving 
such  applicant  or  registered  proprietor  an  opportunity  of  being 
heard. 

Appeal  from  Registrar 

54.  Except  where  expressly  given  by  the  provisions  of  this 
Act  or  rules  made  thereunder  there  shall  be  no  appeal  from  a 
decision  of  the  Registrar  otherwise  than  to  the  Board  of  Trade, 
but  the  court,  in  dealing  with  any  question  of  the  rectification 
of  the  register  (including  all  applications  under  the  provisions 
of  section  thirty-five  of  this  Act),  shall  have  power  to  review 
any  decision  of  the  Registrar  relating  to  the  entry  in  question 
or  the  correction  sought  to  be  made. 

Recognition  of  agents 

55.  Where  by  this  Act  any  act  has  to  be  done  by  or  to  any 
person  in  connection  with  a  trade  mark  or  proposed  trade  mark 
or  any  procedure  relating  thereto,  such  act  may  under  and  in 
accordance  with  rules  made  under  this  Act  or  in  particular  cases 
by  special  leave  of  the  Board  of  Trade  be  done  by  or  to  an 
agent  of  such  party  duly  authorised  in  the  prescribed  manner. 

Registrar  may  take  directions  of  law  officers 

56.  The  Registrar  may,  in  any  case  of  doubt  or  difficulty 
arising  in  the  administration  of  any  of  the  provisions  of  this 
Act,  apply  to  His  Majesty's  Attorney-General  or  Solicitor- 
General  for  England  for  directions  in  the  matter. 

Annual  reports  of  Comptroller 

57.  The  Comptroller  General  of  Patents,  Designs,  and 
Trade  Marks  shall  in  his  yearly  report  on  the  execution  by  or 
under  him  of  the  Patents,  Designs,  and  Trade  Marks  Act,  1883, 
and  Acts  amending  the  same,  include  a  report  respecting  the 
execution  by  or  under  him  of  this  Act  as  though  it  formed  a 
part  of  or  was  included  in  such  Acts. 


378  GREAT  BRITAIN 

POWERS  AND  DUTIES  OF  BOARD  OF  TRADE 
Proceedings  before  Board  of  Trade 

58.  All  things  required  or  authorised  under  this  Act  to  be 
done  by  to  or  before  the  Board  of  Trade  may  be  done  by  to 
or  before  the  President  or  a  secretary  or  an  assistant  secretary 
of  the  Board  or  any  person  authorised  in  that  behalf  by  the 
President  of  the  Board. 

Appeals  to  Board  of  Trade 

59.  Where  under  this  Act  an  appeal  is  made  to  the  Board 
of  Trade,  the  Board  of  Trade  may,  if  they  think  fit,  refer  any 
such  appeal  to  the  Court  in  lieu  of  hearing  and  deciding  it 
themselves,  but,  unless  the  Board  so  refer  the  appeal,  it  shall 
be  heard  and  decided  by  the  Board,  and  the  decision  of  the 
Board  shall  be  final. 

Power  of  Board  of  Trade  to  make  rules 

60.  (1)  Subject  to  the  provisions  of  this  Act  the  Board  of 
Trade  may  from  time  to  time  make  such  rules,  prescribe  such 
forms,  and  generally  do  such  things  as  they  think  expedient — 

(a)  For  regulating  the  practice  under  this  Act: 

(b)  For  classifying  goods  for  the  purposes  of  registration 
of  trade  marks : 

(c)  For  making  or  requiring  duplicates  of  trade  marks  and 
other  documents: 

(d)  For  securing  and  regulating  the  publishing  and  selling 
or  distributing  in  such  manner  as  the  Board  of  Trade  think  fit, 
of  copies  of  trade  marks  and  other  documents : 

(e)  Generally,  for  regulating  the  business  of  the  office  in 
relation  to  trade  marks  and  all  things  by  this  Act  placed  under 
the  direction  or  control  of  the  Registrar,  or  of  the  Board  of 
Trade. 

(2)  Rules  made  under  this  section  shall,  whilst  in  force,  be 
of  the  same  effect  as  if  they  were  contained  in  this  Act. 

(3)  Before  making  any  rules  under  this  section  the  Board 
of  Trade  shall  publish  notice  of  their  intention  to  make  the 
rules  and  of  the  place  where  copies  of  the  draft  rules  may  be 
obtained  in  such  manner  as  the  Board  consider  most  expedient, 
so  as  to  enable  persons  affected  to  make  representations  to  the 
Board  before  the  rules  are  finally  settled. 

(4)  Any  rules  made  in  pursuance  of  this  section  shall  be 
forthwith  advertised  twice  in  the  Trade  Marks  Journal,  and 
shall  be  laid  before  both  Houses  of  Parliament,  if  Parliament 
be  in  session  at  the  time  of  making  thereof,  or,  if  not,  then 
as  soon  as  practicable  after  the  beginning  of  the  then  next  ses- 
sion of  Parliament. 


GREAT  BRITAIN  379 

(5)  If  either  House  of  Parliament  within  the  next  forty 
days  after  any  rules  have  been  so  laid  before  such  House,  re- 
solve that  such  rules  or  any  of  them  ought  to  be  annulled,  the 
same  shall  after  the  date  of  such  resolution  be  of  no  effect,  with- 
out prejudice  to  the  validity  of  anything  done  in  the  meantime 
under  such  rules  or  rule  or  to  the  making  of  any  new  rules  or 
rule. 

FEES 

61.  There  shall  be  paid  in  respect  of  applications  and  regis- 
tration and  other  matters  under  this  Act,  such  fees  as  may  be, 
with  the  sanction  of  the  Treasury,  prescribed  by  the  Board  of 
Trade. 

SPECIAL  TRADE  MARKS 
Standardisation,  etc.,  trade  marks 

62.  Where  any  association  or  person  undertakes  the  exam- 
ination of  any  goods  in  respect  of  origin,  material,  mode  of 
manufacture,  quality,  accuracy,  or  other  characteristic,  and  cer- 
tifies the  result  of  such  examination  by  mark  used  upon  or  in 
connection  with  such  goods,  the  Board  of  Trade  may,  if  they 
shall  judge  it  to  be  to  the  public  advantage,  permit  such  associa- 
tion or  person  to  register  such  mark  as  a  trade  mark  in  respect 
of  such  goods,  whether  or  not  such  association  or  person  be  a 
trading  association  or  trader  or  possessed  of  a  goodwill  in  con- 
nection with  such  examination  and  certifying.    When  so  regis- 
tered such  trade  mark  shall  be  deemed  in  all  respects  to  be  a 
registered  trade  mark,  and  such  association  or  person  to  be  the 
proprietor  thereof,  save  that  such  trade  mark  shall  be  transmis- 
sible or  assignable  only  by  permission  of  the  Board  of  Trade. 

SHEFFIELD  MARKS 

63.  With  respect  to  the  master,  wardens,  searchers,  assis- 
tants, and  commonalty  of  the  Company  of  Cutlers  in  Hallam- 
shire,  in  the  county  of  York  (in  this  Act  called  the  Cutlers'  Com- 
pany), and  the  marks  or  devices  (in  this  Act  called  Sheffield 
marks)  assigned  or  registered  by  the  master,  wardens,  searchers, 
and  assistants  of  that  company,  the  following  provisions  shall 
have  effect: 

(1)  The  Cutlers'  Company  shall  continue  to  keep  at  Shef- 
field the  register  of  trade  marks  (in  this  Act  called  the  Sheffield 
register),  kept  by  them  at  the  date  of  the  commencement  of 
this  Act,  and,  save  as  otherwise  provided  by  this  Act,  such  regis- 
ter shall  for  all  purposes  form  part  of  the  register: 

(2)  The  Cutlers'  Company  shall,  on  request  made  in  the 
prescribed  manner,  enter  in  the  Sheffield  register,  in  respect  of 
metal  goods  as  defined  in  this  section,  all  the  trade  marks  which 


380  GREAT  BRITAIN 

shall  have  been  assigned  by  the  Cutlers'  Company  and  actually 
used  before  the  first  day  of  January  one  thousand  eight  hundred 
and  eighty-four,  but  which  have  not  been  entered  in  such  regis- 
ter before  the  passing  of  this  Act: 

(3)  An  application  for  registration  of  a  trade  mark  used 
on  metal  goods  shall,  if  made  after  the  commencement  of  this 
Act  by  a  person  carrying  on  business  in  Hallamshire,  or  within 
six  miles  thereof,  be  made  to  the  Cutlers '  Company : 

(4)  Every  application  so  made  to  the  Cutlers'  Company 
shall  be  notified  to  the  Registrar  in  the  prescribed  manner,  and, 
unless  the  Registrar  within  the  prescribed  time  gives  notice  to 
the  Cutlers'  Company  of  any  objection  to  the  acceptance  of  tho 
application,  it  shall  be  proceeded  with  by  the  Cutlers'  Company 
in  the  prescribed  manner : 

(5)  If  the  Registrar  gives  notice  of  an  objection  as  afore- 
said, the  application  shall  not  be  proceeded  with  by  the  Cutlers' 
Company,  but  any  person  aggrieved  may  in  the  prescribed  man- 
ner appeal  to  the  Court : 

(6)  Upon  the  registration  of  a  trade  mark  in  the  Sheffield 
register  the  Cutlers'  Company  shall  give  notice  thereof  to  the 
Registrar,  who  shall  thereupon  enter  the  mark  in  the  register 
of  trade  marks ;  and  such  registration  shall  bear  date  as  of  the 
day  of  application  to  the  Cutlers'  Company,  and  have  the  same 
effect  as  if  the  application  had  been  made  to  the  Registrar  on 
that  day: 

(7)  The  provisions  of  this  Act,  and  of  any  rules  made  under 
this  Act  with  respect  to  the  registration  of  trade  marks,  and 
all  matters  relating  thereto,  shall,  subject  to  the  provisions  of 
this  section  (and  notwithstanding  anything  in  any  Act  relating 
to  the  Cutlers'  Company),  apply  to  the  registration  of  trade 
marks  on  metal  goods  by  the  Cutlers'  Company,  and  to  all  mat- 
ters relating  thereto ;  and  this  Act  and  any  such  rules  shall,  so 
far  as  applicable,  be  construed  accordingly  with  the  substitution 
of  the  Cutlers'  Company,  the  office  of  the  Cutlers'  Company, 
and  the  Sheffield  register,  for  the  Registrar,  the  Patent  Office, 
and  the  Register  of  Trade  Marks  respectively;  and  notice  of 
every  entry,  cancellation,  or  correction  made  in  the  Sheffield 
register  shall  be  given  to  the  Register  by  the  Cutlers'  Company. 

(8)  When  the  Registrar  receives  from  any  person  not  car- 
rying on  business  in  Hallamshire  or  within  six  miles  thereof 
an  application  for  registration  of  a  trade  mark  used  on  metal 
goods,  he  shall  in  the  prescribed  manner  notify  the  application 
and  proceedings  thereon  to  the  Cutlers'  Company: 

(9)  Any  person  aggrieved  by  a  decision  of  the  Cutlers' 
Company  in  respect  of  anything  done  or  omitted  under  this  Act 


GREAT  BRITAIN  381 

may,  in  the  prescribed  manner,  appeal  to  the  Court: 

(10)  For  the  purposes  of  this  section  the  expression  ' 'metal 
goods"  means   all   metals,   whether  wrought,   unwrought,   or 
partly  wrought,  and  all  goods  composed  wholly  or  partly  of 
any  metal : 

(11)  For  the  purpose  of  legal  proceedings  in  relation  to 
trade  marks  entered  in  the  Sheffield  register  a  certificate  under 
the  hand  of  the  Master  of  the  Cutlers'  Company  shall  have  the 
same  effect  as  the  certificate  of  the  Registrar. 

COTTON  MARKS 

64.  (1)  The  Manchester  Branch  of  the  Trade  Marks  Regis- 
try of  the  Patent  Office  (herein-after  called  "the  Manchester 
Branch")  shall  be  continued  according  to  its  present  constitu- 
tion. A  chief  officer  of  the  Manchester  Branch  shall  be  ap- 
pointed who  shall  be  styled  "the  Keeper  of  Cotton  Marks," 
and  shall  act  under  the  direction  of  the  Registrar.  The  present 
keeper  of  the  Manchester  Branch  shall  be  the  first  Keeper  of 
Cotton  Marks. 

(2)  As  regards  cotton  goods  which  have  hitherto  consti- 
tuted classes  23,  24,  and  25,  under  the  classification  of  goods 
under  the  Patents,  Designs,  and  Trade  Marks  Acts,  1883  to 
1902,  the  Register  of  Trade  Marks  for  all  such  goods,  except 
such  as  may  be  prescribed,  shall  be  called  "the  Manchester  Reg- 
ister," and  a  duplicate  thereof  shall  be  kept  at  the  Manchester 
Branch. 

(3)  All  applications  for  registration  of  trade  marks  for 
such  cotton  goods  in  the  said  classes  (herein-after  referred  to 
as  "cotton  marks")  shall  be  made  to  the  Manchester  Branch. 

(4)  Every  application  so  made  to  the  Manchester  Branch 
shall  be  notified  to  the  Registrar  in  the  prescribed  manner,  to- 
gether with  the  report  of  the  Keeper  of  Cotton  Marks  thereon, 
and  unless  the  Registrar,  after  considering  the  report  and  hear- 
ing, if  so  required,  the  applicant,  within  the  prescribed  times 
gives  notice  to  the  Keeper  of  Cotton  Marks  of  objection  to  the 
acceptance  of  the  application,  it  shall  be  advertised  by  the 
Manchester  Branch  and  shall  be  proceeded  with  in  the  pre- 
scribed manner. 

(5)  If  the  Registrar  gives  notice  of  objection  as  aforesaid 
the  application  shall  not  be  proceeded  with,  but  any  person 
aggrieved  may  in  the  prescribed  manner  appeal  to  the  Court 
or  the  Board  of  Trade,  at  the  option  of  the  applicant. 

(6)  Upon  the  registration  of  a  trade  mark  in  the  Manches- 
ter Register  the  Keeper  of  Cotton  Marks  shall  upon  notice 
thereof  from  the  Registrar  thereupon  enter  the  mark  in  the 


382  GREAT  BRITAIN 

duplicate  of  the  Manchester  Register,  and  such  registration  shall 
bear  date  as  of  the  day  of  application  to  the  Manchester  Branch, 
and  shall  have  the  same  effect  as  if  the  application  had  been 
made  to  the  Registrar  on  that  day. 

(7)  When  any  mark  is  removed  from  or  any  cancellation 
or  correction  made  in  the  Manchester  Register  notice  thereof 
shall  be  given  by  the  Registrar  to  the  Keeper  of  Cotton  Marks, 
who  shall  alter  the  duplicate  register  accordingly. 

(8)  For  the  purpose  of  all  proceedings  in  relation  to  trade 
marks  entered  in  the  Manchester  Register  a  certificate  under 
the  hand  of  the  Keeper  of  Cotton  Marks  shall  have  the  same 
effect  as  a  certificate  of  the  Registrar. 

(9)  In  every  application  for  registration  of  a  cotton  mark, 
if  such  mark  has  been  used  by  the  applicant  or  his  predecessors 
in  business  prior  to  the  date  of  application,  the  length  of  time 
of  such  user  shall  be  stated  on  the  application. 

(10)  As  from  the  passing  of  this  Act — 

(a)  In  respect  of  cotton  piece  goods  and  cotton  yarn  no 
mark  consisting  of  a  word  or  words  alone  (whether  invented 
or  otherwise)  shall  be  registered,  and  no  word  or  words  shall 
be  deemed  to  be  distinctive  in  respect  of  such  goods : 

(b)  In  respect  of  cotton  piece  goods  no  mark  consisting  of 
a  line  heading  alone  shall  be  registered,  and  no  line  heading 
shall  be  deemed  to  be  distinctive  in  respect  of  such  goods : 

(c)  No  registration  of  a  cotton  mark  shall  give  any  exclu- 
sive right  to  the  use  of  any  word,  letter,  numeral,  line  heading, 
or  any  combination  thereof. 

(11)  The  right  of  inspection  of  the  Manchester  Register 
shall  extend  to  and  include  the  right  to  inspect  all  applications 
whatsoever  that  have  been  since  the  passing  of  the  Trade  Marks 
Registration  Act,  1875,  and  hereafter  shall  have  been  made  to 
the  Manchester  Branch  in  respect  of  cotton  goods  in  classes  23, 
24,  and  25,  whether  registered,  refused,  lapsed,  expired,  with- 
drawn, abandoned,  cancelled,  or  pending. 

(12)  The  Keeper  of  Cotton  Marks  shall,  on  request,  and 
on  production  of  a  facsimile  of  the  mark,  and  on  payment  of 
the  prescribed  fee,  issue  a  certified  copy  of  the  application  for 
registration  of  any  cotton  mark,  setting  forth  in  such  certificate 
the  length  of  time  of  user  (if  any)  of  such  mark  as  stated  on  the 
application,  and  any  other  particulars  he  may  deem  necessary. 

(13)  As  regards  any  rules  or  forms  affecting  cotton  marks 
which  are  proposed  by  the  Board  of  Trade  to  be  made,  the 
draft  of  the  same  shall  be  sent  to  the  Keeper  of  Cotton  Marks 
and  also  to  the  Manchester  Chamber  of  Commerce.    And  the 
said  Keeper,  and  also  the  said  Chamber,  shall,  if  they  or  either 


00 
GBEAT  BRITAIN  383 

of  them  so  request,  be  entitled  to  be  heard  by  the  Board  of 
Trade  upon  such  proposed  rules  before  the  same  are  carried  into 
effect. 

(14)  The  existing  practice  whereby  the  keeper  of  the  Man- 
chester Branch  consults  the  Trade  and  Merchandise  Marks 
Committee  appointed  by  the  Manchester  Chamber  of  Commerce 
upon  questions  of  novelty  or  difficulty  arising  on  applications 
to  register  cotton  marks  shall  be  continued  by  the  Keeper  of 
Cotton  Marks. 

INTERNATIONAL  AND  COLONIAL,  ARRANGEMENTS 

65.  The  provisions  of  sections  one  hundred  and  three  and 
one  hundred  and  four  of  the  Patents,  Designs,  and  Trade  Marks 
Act,  1883   (as  amended  by  the  Patents,  Designs,  and  Trade 
Marks  (Amendment)  Act,  1885),*  relating  to  the  registration 
of  trade  marks  both  as  enacted  in  such  Acts  and  as  applied  by 
any  Order  in  Council  made  thereunder,  shall  be  construed  as 
applying  to  trade  marks  registrable  under  this  Act. 

OFFENCES 
Falsification  of  Entries  in  Register 

66.  If  any  person  makes  or  causes  to  be  made  a  false  entry 
in  the  register  kept  under  this  Act,  or  a  writing  falsely  pur- 
porting to  be  a  copy  of  an  entry  in  any  such  register,  or  pro- 
duces or  tenders  or  causes  to  be  produced  or  tendered  in  evi- 
dence any  such  writing,  knowing  the  entry  or  writing  to  be 
false,  he  shall  be  guilty  of  a  misdemeanor. 

Penalty  on  Falsely  Representing  a  Trade  Mark  as  Registered 

67.  (1)  Any  person  who  represents  a  trade  mark  as  reg- 
istered which  is  not  so,  shall  be  liable  for  every  offence  on 
summary  conviction  to  a  fine  not  exceeding  five  pounds. 

(2)  A  person  shall  be  deemed,  for  the  purposes  of  this 
enactment,  to  represent  that  a  trade  mark  is  registered,  if  he 
uses  in  connection  with  the  trade  mark  the  word  "registered/* 
or  any  words  expressing  or  implying  that  registration  has  been 
obtained  for  the  trade  mark. 

ROYAL  ARMS 
Unauthorised  Assumption  of  Royal  Arms 

68.  If  any  person,  without  the  authority  of  His  Majesty, 
uses  in  connection  with  any  trade,  business,  calling,  or  profes- 
sion, the  Royal  Arms  (or  arms  so  closely  resembling  the  same 
as  to  be  calculated  to  deceive)  in  such  manner  as  to  be  calcu- 
lated to  lead  to  the  belief  that  he  is  duly  authorised  so  to  use 
the  Royal  Arms,  or  if  any  person  without  the  authority  of  His 

*  Repealed  by  Patents  and  Designs  Act,  1907,  Sec.  91 — which  see — of  the 
latter  Act  being  substantially  the  same  as  the  provisions  repealed. 


384  GEEAT  BRITAIN 

Majesty  or  of  a  member  of  the  Royal  Family,  uses  in  connec- 
tion with  any  trade,  business,  calling,  or  profession  any  device, 
emblem,  or  title  in  such  manner  as  to  be  calculated  to  lead  to 
the  belief  that  he  is  employed  by  or  supplies  goods  to  His 
Majesty  or  such  member  of  the  Royal  Family,  he  may,  at  the 
suit  of  any  person  who  is  authorised  to  use  such  arms  or  such 
device,  emblem,  or  title,  or  is  authorised  by  the  Lord  Chamber- 
lain to  take  proceedings  in  that  behalf,  be  restrained  by  injunc- 
tion or  interdict  from  continuing  so  to  use  the  same :  Provided 
that  nothing  in  this  section  shall  be  construed  as  affecting  the 
right,  if  any,  of  the  proprietor  of  a  trade  mark  containing  any 
such  arms,  device,  emblem,  or  title  to  continue  to  use  such  trade 
mark. 

COURTS 
General  Saving  for  Jurisdiction  of  Courts 

69.  The  provisions  of  this  Act  conferring  a  special  juris- 
diction on  the  Court  as  denned  by  this  Act  shall  not,  except  so 
far  as  the  jurisdiction  extends,  affect  the  jurisdiction  of  any 
court  in  Scotland  or  Ireland  in  any  proceedings  relating  to 
trade  marks;  and  with  reference  to  any  such  proceedings  in 
Scotland  the  term  "the  Court"  shall  mean  the  Court  of  Ses- 
sion; and  with  reference  to  any  such  proceedings  in  Ireland 
the  term  "the  Court"  shall  mean  the  High  Court  of  Justice 
in  Ireland. 

Isle  of  Man 

70.  This  Act  shall  extend  to  the  Isle  of  Man,  and — 

(1)  Nothing  in  this  Act  shall  affect  the  jurisdiction  of  the 
Courts  in  the  Isle  of  Man  in  proceedings  for  infringement  or 
in  any  action  or  proceeding  respecting  a  trade  mark  competent 
to  those  courts: 

(2)  The  punishment  for  a  misdemeanor  under  this  Act 
in  the  Isle  of  Man  shall  be  imprisonment  for  any  term  not 
exceeding  two  years,  with  or  without  hard  labour  and  with  or 
without  a  fine  not  exceeding  one  hundred  pounds,  at  the  discre- 
tion of  the  Court: 

(3)  Any  offence  under  this  Act  committed  in  the  Isle  of 
Man  which  would  in  England  be  punishable  on  summary  con- 
viction may  be  prosecuted,  and  any  fine  in  respect  thereof 
recovered  at  the  instance  of  any  person  aggrieved,  in  the  man- 
ner in  which  offences  punishable  on  summary  conviction  may 
for  the  time  being  be  prosecuted. 

Jurisdiction  of  Lancashire  Palatine  Court 
71.     The  Court  of  Chancery  of  the  County  Palatine  of  Lan- 
caster shall,  with  respect  to  any  action  or  other  proceeding  in 


GREAT  BRITAIN  385 

relation  to  trade  marks,  the  registration  whereof  is  applied 
for  in  the  Manchester  Branch,  have  the  like  jurisdiction  under 
this  Act  as  His  Majesty's  High  Court  of  Justice  in  England, 
and  the  expression  "the  Court"  in  this  Act  shall  be  construed 
and  have  effect  accordingly: 

Provided  that  every  decision  of  the  Court  of  Chancery  of 
the  County  Palatine  of  Lancaster  in  pursuance  of  this  section 
shall  be  subject  to  the  like  appeal  as  decisions  of  that  Court  in 
other  cases. 

Offences  in  Scotland 

72.  In  Scotland  any  offence  under  this  Act  declared  to  be 
punishable  on  summary  conviction  may  be  prosecuted  in  the 
Sheriff  Court. 

REPEAL;  SAVINGS 
Repeal  and  Saving  for  Rules,  Etc. 

73.  The  enactments  described  in  the  schedule  to  this  Act 
are  repealed  to  the  extent  mentioned  in  the  third  column,  but 
this  repeal  shall  not  affect  any  rule,  table  of  fees,  or  classifica- 
tion of  goods  made  under  any  enactment  so  repealed,  but  every 
such  rule,  table  of  fees,  or  classification  of  goods  shall  continue 
in  force  as  if  made  under  this  Act  until  superseded  by  rules, 
tables  of  fees,  or  classification  under  this  Act. 

Application  of  46  &  47  Viet.  c.  57  ss.  82-84 

74.  The  provisions  of  sections  eighty-two  to  eighty-four 
of  the  Patents,  Designs,   and   Trade   Marks  Act,   1883,*   as 
amended  by  any  subsequent  enactment,  shall  continue  to  apply 
with  respect  to  the  administration  at  the  Patent  Office  of  the 
Law  relating  to  the   registration  of  trade  marks,  and  shall 
accordingly  be  construed  as  if  this  Act  formed  part  of  that  Act. 


TRADE  MARKS  ACT  [OF  DECEMBER  23],  1919 
CHAPTER  79 

PART  I 

REGISTRATION  OF  CERTAIN  TRADE  MARKS  NOT  REGISTRABLE  UNDER 

PRINCIPAL  ACT 

Division  of  Register  of  Trade  Marks  Into  Two  Parts 
1.     (1)  The  register  of  trade  marks  (including  the  Man- 
chester Register)  kept  under  the  Trade  Marks  Act,  1905  (here- 
inafter referred  to  as  the  principal  Act),  shall  be  divided  into 

'Sections  82  to  84,  in  question,  follow. 


386  GREAT  BRITAIN 

two  parts  to  be  called  respectively  Part  A  and  Part  B. 

(2)  Part  A  of  the  register  shall  comprise  all  trade  marks 
entered  in  the  register  of  trade  marks  at  the  commencement  of 
this  Act  and  all  trade  marks  which  after  the  commencement 
of  this  Act  may  be  registered  under  the  provisions  of  the  prin- 
cipal Act. 

(3)  Part  B  shall  comprise  all  trade  marks  registered  under 
this  Part  of  this  Act,  and  all  trade  marks  entered  on  or  removed 
thereto  under  this  Act. 

Registration  of  Trade  Maries  in  Part  B 
2.  (1)  Where  any  mark  has  for  not  less  than  two  years 
been  bona  fide  used  in  the  United  Kingdom  upon  or  in  connec- 
tion with  any  goods  (whether  for  sale  in  the  United  Kingdom 
or  exportation  abroad),  for  the  purpose  of  indicating  that  they 
are  the  goods  of  the  proprietor  of  the  mark  by  virtue  of  manu- 
facture, selection,  certification,  dealing  with  or  offering  for  sale, 
the  person  claiming  to  be  the  proprietor  of  the  mark  may  apply 
in  writing  to  the  registrar  in  the  prescribed  manner  to  have 
the  mark  entered  as  his  registered  trade  mark  in  Part  B  of  the 
register  in  respect  of  such  goods. 

(2)  The  registrar  shall  consider  every  such  application  for 
registration  of  a  trade  mark  in  Part  B  of  the  register,  and  if 
it  appears  to  him  after  such  search,  if  any,  as  he  may  deem 
necessary,  that  the  application  is  inconsistent  with  the  pro- 
visions of  section  eleven  or  section  nineteen  of  the  principal 
Act,  or  if  he  is  not  satisfied  that  the  mark  has  been  so  used  as 
aforesaid,  or  that  it  is  capable  of  distinguishing  the  goods  of 
the  applicant,  he  may  refuse  the  application,  or  may  accept  it 
subject  to  conditions,  amendments  or  modifications  as  to  the 
goods  or  classes  of  goods  in  respect  of  which  the  mark  is  to  be 
registered,  or  to  such  limitations,  if  any,  as  to  mode  or  place  of 
user  or  otherwise  as  he  may  think  right  to  impose,  and  in  any 
other  case  he  shall  accept  the  application. 

(3)  Every   such   application  shall  be   accompanied   by   a 
statutory  declaration  verifying  the  user,  including  the  date  of 
first  user,  and  such  date  shall  be  entered  on  the  register. 

(4)  Any  such  refusal  or  conditional  acceptance  shall  be 
subject  to  appeal  to  the  court,  and,  if  the  ground  for  refusal  is 
insufficiency  of  evidence  as  to  user,  such  refusal  shall  be  with- 
out prejudice  to  any  application  for  registration  of  the  trade 
mark  under  the  provisions  of  the  principal  Act. 

(5)  Every  such  application  shall,  if  accepted,  be  advertised 
in  accordance  with  the  provisions  of  the  principal  Act. 

(6)  A  mark  may  be  registered  in  Part  B,  notwithstanding 


GREAT  BRITAIN  387 

any  registration  in  Part  A  by  the  same  proprietor  of  the  same 
mark  or  any  part  or  parts  thereof. 

Application  of  Certain  Provisions  of  Principal  Act  to 
Part  B  Trade  Marks 

3.  The  provisions  of  the  principal  Act  as  amended  by  this 
Act,  with  the  exception  of  those  set  out  in  the  First  Schedule 
to  this  Act,  shall,  subject  to  the  provisions  of  this  Part  of  this 
Act,  apply  in  respect  of  trade  marks  to  which  this  Part  of  this 
Act  applies  as  if  they  were  herein  re-enacted  and  in  terms  made 
applicable  to  this  Part  of  this  Act. 

Effect  of  Registration  in  Part  B 

4.  The  registration  of  a  person  as  the  proprietor  of  a 
trade  mark  in  Part  B  of  the  register  shall  be  prima  facie  evi- 
dence that  that  person  has  the  exclusive  right  to  the  use  of  that 
trade  mark,  but  in  any  action  for  infringement  of  a  trade  mark 
entered  in  Part  B  of  the  register,  no  injunction,  interdict  or 
other  relief  shall  be  granted  to  the  owner  of  the  trade  mark  in 
respect  of  such  registration,  if  the  defendent  establishes  to  the 
satisfaction  of  the  court  that  the  user  of  which  the  plaintiff 
complains  is  not  calculated  to  deceive  or  to  lead  to  the  belief 
that  the  goods  the  subject  of  such  user  were  goods  manufac- 
tured, selected,  certified,  dealt  with  or  offered  for  sale  by  the 
proprietor  of  the  trade  mark. 

Power  to  Treat  Applications  for  Registration  in  Part  A  as 
Applications  for  Registration  in  Part  B 

5.  If  any  person  applies  for  the  registration  of  a  trade 
mark  under  the  principal  Act  in  Part  A  of  the  register,  the 
registrar  may,  if  the  applicant  is  willing,  instead  of  refusing 
the  application,  treat  it  as  an  application  for  registration  in 
Part  B  of  the  register  under  this  Part  of  this  Act  and  deal 
with  the  application  accordingly. 

PART  II 

PROVISIONS  FOR  THE  PREVENTION  OF  ABUSES  OF  TRADE  MARKS 

Removal  from  Register  of  Word  Trade  Marks  Used  as 

Names  of  Articles 

6.  (1)  Where  in  the  case  of  an  article  or  substance  manu- 
factured under  any  patent  in  force  at  or  granted  after  the  pass- 
ing of  this  Act,  a  word  trade  mark  registered  under  the  principal 
Act  or  Part  I  of  this  Act  is  the  name  or  only  practicable  name 
of  the  article  or  substance  so  manufactured,  all  rights  to  the 
exclusive  use  of  such  trade  mark,  whether  under  the  common 
law  or  by  registration  (and  notwithstanding  the  provisions  of 


388  GREAT  BRITAIN 

section  forty-one  of  the  principal  Act),  shall  cease  upon  the 
expiration  or  determination  of  the  patent,  and  thereafter  such 
word  shall  not  be  deemed  a  distinctive  mark,  and  may  be 
removed  by  the  Court  from  the  register  on  the  application  of 
any  person  aggrieved. 

(2)  No  word  which  is  the  only  practicable  name  or  descrip- 
tion of  any  single  chemical  element  or  single  chemical  com- 
pound, as  distinguished  from  a  mixture,  shall  be  registered  as 
a  trade  mark,  and  any  such  word  now  or  hereafter  on  the  regis- 
ter may,  notwithstanding  section  forty-one  of  the  principal 
Act,  be  removed  by  the  court  from  the  register  on  the  applica- 
tion of  any  person  aggrieved: 

Provided  that — 

(a)  the  provisions  of  this  subsection  shall  not  apply  where 
the  mark  is  used  to  denote  only  the  proprietor's  brand  or  make 
of  such  substance,  as  distinguished  from  the  substance  as  made 
by  others,  and  in  association  with  a  suitable  practicable  name 
open  to  the  public  use;  and 

(b)  in  the  case  of  marks  registered  before  the  passing  of 
this  Act,  no  application  under  this  section  for  the  removal  of 
the  mark  from  the  register  shall  be  entertained  until  after  the 
expiration  of  four  years  from  the  passing  of  this  Act. 

(3)  The  power  to  remove  a  trade  mark  from  the  register 
conferred  by  this  section  shall  be  in  addition  to  and  not  in 
derogation  of  any  other  powers  of  the  court  in  respect  of  the 
removal  of  trade  marks  from  the  register. 

(4)  The   provisions   contained  in   Part  III   of  this   Act 
authorising  applications  for  the  rectification  of  the  register  to 
be  made  in  the  first  instance  to  the  registrar  instead  of  to  the 
court  shall  apply  to  applications  under  this  section. 

PART  III 

GENERAL  AMENDMENTS  OF  PRINCIPAL  ACT 
Amendment  of  the  Law  As  to  Registrable  Trade  Marks 

7.  In  paragraph  (5)  of  section  nine  of  the  principal  Act 
(which  defines  the  particulars  which  registrable  trade  marks 
must  contain  or  consist  of)  for  the  words  "except  by  order  of 
the  Board  of  Trade  or  the  court  be  deemed  a  distinctive  mark," 
there  shall  be  substituted  the  words  "be  registrable  under  the 
provisions  of  this  paragraph,  except  upon  evidence  of  its  dis- 
tinctiveness." 

Appeals 

8.  (1)  All  appeals  from  the  decisions  of  the  registrar 
under  section  fourteen  of  the  principal  Act  shall  be  made  to 


GREAT  BRITAIN  389 

the  court,  and  an  appeal  shall  not  lie  from  any  such  decision 
to  the  Board  of  Trade,  and  accordingly  that  section  shall  have 
effect,  subject  to  the  modifications  set  forth  in  the  Second 
Schedule  to  this  Act : 

Provided  that  nothing  in  this  subsection  shall  affect  any 
appeal  which  may  be  pending  at  the  commencement  of  this  Act. 

(2)  In  any  appeal  from  the  decision  of  the  registrar  to  the 
court  under  the  principal  Act  or  this  Act  the  court  shall  have 
and  exercise  the  same  discretionary  powers  as  under  the  prin- 
cipal Act  or  this  Act  are  conferred  upon  the  registrar. 

Rectification  of  Register 

9.  (1)  Any  application  for  the  rectification  of  the  register 
or  the  removal  of  any  trade  mark  from  the  register  in  respect 
of  any  goods  which,  under  section  thirty-five  or  section  thirty- 
seven  of  the  principal  Act  or  under  Part  II  of  this  Act,  is  to  be 
made  to  the  court,  may,  at  the  option  of  the  applicant,  be  made 
in  the  first  instance  to  the  registrar: 

Provided  that  no  such  application  shall  be  made  otherwise 
than  to  the  court  where  an  action  concerning  the  trade  mark  in 
question  is  pending. 

(2)  The  registrar  may,  at  any  stage  of  the  proceedings, 
refer  any  such  application  to  the  court  or  he  may,  after  hearing 
the  parties,  determine  the  question  between  them,  subject  to 
appeal  to  the  court. 

(3)  In  any  proceedings  for  the  rectification  of  the  register 
under  this  Act  or  under  section  thirty-five  of  the  principal  Act 
as  amended  by  this  section  the  court  or  the  registrar  shall,  in 
addition  to  the  powers  conferred  by  that  section  as  so  amended, 
have  power  to  direct  a  trade  mark  entered  in  Part  A  of  the 
register  to  be  removed  to  Part  B  of  the  register. 

Costs 

10.  In  all  proceedings  before  the  registrar  under  the  prin- 
cipal Act  or  this  Act  the  registrar  shall  have  power  to  award 
to  any  party  such  costs  as  he  may  consider  reasonable,  and  to 
direct  how  and  by  what  parties  they  are  to  be  paid,  and  any 
such  order  may  be  made  a  rule  of  court. 

Registration  of  Assignments 

11.  For  section  thirty- three  of  the  principal  Act,  the  fol- 
lowing section  shall  be  substituted: 

"33.  (1)  Where  a  person  becomes  entitled  by  assignment, 
transmission,  or  other  operation  of  law  to  a  registered  trade 
mark,  he  shall  make  application  to  the  registrar  to  register  his 
title,  and  the  registrar  shall,  on  receipt  of  such  application  and 
on  proof  of  title  to  his  satisfaction,  register  him  as  the  proprie- 


390  GREAT  BRITAIN 

tor  of  the  trade  mark,  and  shall  cause  an  entry  to  be  made  in 
the  prescribed  manner  on  the  register  of  the  assignment,  trans- 
mission, or  other  instrument  affecting  the  title.  Any  decision 
of  the  registrar  under  this  section  shall  be  subject  to  appeal  to 
the  court. 

"(2)  Except  in  cases  of  appeals  under  this  section  and 
applications  made  under  section  thirty-five  of  this  Act,  a  docu- 
ment or  instrument  in  respect  of  which  no  entry  has  been  made 
in  the  register  in  accordance  with  the  provisions  of  subsection 
(1)  aforesaid  shall  not  be  admitted  in  evidence  in  any  court  in 
proof  of  the  title  to  a  trade  mark  unless  the  court  otherwise 
directs.'* 

Minor  Amendments  of  Principal  Act 

12.  The  amendments  specified  in  the  second  column*  of 
.the  Second  Schedule  to  this  Act,  which  relate  to  minor  details, 
shall  be  made  in  the  provisions  of  the  principal  Act  specified 
in  the  first  column  of  that  schedule. 

13.  (1)  This  Act  may  be  cited  as  the  Trade  Marks  Act, 
1919,  and  the  Trade  Marks  Acts,  1905  and  1914,  and  so  much 
of  the  Patents  and  Designs  Acts,  1907  to  1919,  as  relates  to 
trade  marks,  and  this  Act  may  be  cited  together  as  the  Trade 
Marks  Act,  1905  to  1919. 

(2)  This  Act  shall  be  construed  as  one  with  the  principal 
Act  and  shall  come  into  operation  on  the  first  day  of  April, 
nineteen  hundred  and  twenty. 

SCHEDULES 

FIEST  SCHEDULE 

Section  3 

PROVISIONS  OP  PRINCIPAL  ACT  NOT  APPLIED 
SECTION  1.     Short  title. 
SEC.  2.    Commencement  of  Act. 
SEC.  6.    Incorporation  of  existing  register. 
SEC.  9.    Registrable  trade  marks. 
SEC.  12.    Application  for  registration. 
SEC.  14.     (9)  Modification  of  trade  mark  on  appeals. 
SEC.  15.    Disclaimers. 
SEC.  24.    Associated  trade  marks. 
SEC.  25.    Combined  trade  marks. 

SEC.  27.    Assignment  and  user  of  associated  trade  marks. 
SEC.  31.     Status  of  unrenewed  trade  marks. 
SEC.  36.     Trade  marks  registered  under  previous  Acts. 

*This  expression  has  reference  to  the  tabular  form  in  which  the  Second 
Schedule  was  originally  drawn  up. 


GREAT  BRITAIN  391 

SEC.  39.  (except  proviso).  Rights  of  proprietor  of  trade 
mark. 

SEC.  41 — down  to  the  words  ' '  against  the  provisions  of  sec- 
tion eleven  of  this  Act."  Registration  to  be  conclusive  after 
seven  years. 

SEC.  42.    Unregistered  trade  mark. 

SEC.  62.     Standardization,  &c.,  trade  marks. 

SEC.  73.    Repeal  and  saving  for  rules,  &c. 

SECOND  SCHEDULE 
Sections  8  and  12 

MINOR  AMENDMENTS  OF  PRINCIPAL  ACT 
Section  Amended;  Nature  of  Amendment 

SECTION  12.  At  the  end  of  subsection  (2)  there  shall  be 
inserted  the  following  words  "or  to  such  limitations  if  any,  as 
to  mode  or  place  of  user  or  otherwise  as  he  may  think  right  to 
impose. ' ' 

In  subsection  (4),  after  the  words  "modifications,  if  any," 
shall  be  inserted  the  words  "  or  to  what  limitations,  if  any,  as  to 
mode  or  place  of  user  or  otherwise." 

SEC.  13.  After  the  word  "conditions"  in  both  places 
where  it  occurs,  there  shall  be  inserted  the  words  "and  limi- 
tations." 

At  the  end  of  the  section  there  shall  be  inserted  the  words 
"Provided  that  an  application  under  the  provisions  of  subsec- 
tion (5)  of  section  nine  of  this  Act  may  be  advertised  by  the 
Registrar  on  receipt  of  such  application  and  before  acceptance. ' ' 

SEC.  14.  In  subsection  (4),  after  the  word  "conditions" 
there  shall  be  inserted  the  following  words  ' '  or  what  limitations 
as  to  mode  or  place  of  user  or  otherwise." 

In  subsection  (5)  the  words  "or  with  the  consent  of  the 
parties,  to  the  Board  of  Trade"  shall  be  repealed. 

In  subsection  (6)  the  words  "the  Board  of  Trade  or"  and 
"as  the  case  may  be"  shall  be  repealed;  and  after  the  words 
"conditions,  if  any"  there  shall  be  inserted  the  words  "or  what 
limitations,  if  any,  as  to  mode  or  place  of  user  or  otherwise." 

Subsection  (10)  shall  be  repealed. 

SEC.  16.  After  the  words  "the  registrar  shall"  there  shall 
be  inserted  the  words  "unless  the  mark  has  been  accepted  in 
error  or." 

SEC.  21.  After  the  word  "court"  there  shall  be  inserted 
the  words  "or  registrar"  in  each  case. 

Delete  the  words  "as  it  may  think  it  right  to  impose"  and 
insert  "as  the  court  or  the  registrar,  as  the  case  may  be,  may 
think  it  right  to  impose." 


392  GREAT  BRITAIN 

SEC.  22.  At  the  end  of  the  section  there  shall  be  added 
the  following  words  "and  the  assignment  of  such  right  to  use 
the  same  shall  constitute  the  assignee  a  proprietor  of  a  separate 
trade  mark  for  the  purpose  of  section  twenty-one  of  this  Act, 
subject  to  such  conditions  and  limitations  as  may  be  imposed 
under  that  section. " 

SEC.  23.  After  the  words  " modifications,  if  any,"  there 
shall  be  inserted  the  words  "and  to  such  limitations,  if  any,  as 
to  mode  or  place  of  user." 

SEC.  24.  After  the  words  "registration  of  a  trade  mark" 
there  shall  be  inserted  the  words  "identical  with  or." 

SEC.  34.  After  the  word  "terms"  there  shall  be  inserted 
the  words  "and  subject  to  such  limitations  as  to  mode  or  place 
of  user." 

SEC.  41.  In  the  proviso,  after  the  words  "anterior  to  the 
user"  there  shall  be  inserted  the  words  "or  registration,  which- 
ever is  the  earlier." 

SEC.  43.  For  section  forty-three  the  following  section  shall 
be  substituted :  "  In  any  action  or  proceeding  relating  to  a  trade 
mark  or  trade  name  the  tribunal  shall  admit  evidence  of  the 
usages  of  the  trade  concerned  and  of  any  relevant  trade  mark 
or  trade  name  or  get  up  legitimately  used  by  other  persons." 

SEC.  62.  For  the  words  "Where  any  association  or  person 
undertakes  the  examination  of  any  goods  in  respect  of  origin, 
material,  mode  of  manufacture,  quality,  accuracy  or  other  char- 
acteristic, and  certifies  the  result  of  such  examination  by  mark 
used  upon  or  in  connection  with  such  goods,  the  Board  of  Trade 
may,  if  they  shall  judge  it  to  be  to  the  public  advantage,  permit 
such  association  or  person  to  register  such  mark  as  a  trade 
mark  in  respect  of  such  goods  whether  or  not  such  associa- 
tion or  person  be  a  trading  association  or  trader  or  possessed 
of  a  goodwill  in  connection  with  such  examination  and  certify- 
ing," there  shall  be  substituted  the  words  "Where  any  associa- 
tion or  person  undertakes  to  certify  the  origin,  material,  mode 
of  manufacture,  quality,  accuracy  or  other  characteristic  of  any 
goods  by  mark  used  upon  or  in  connection  with  such  goods,  the 
Board  of  Trade,  if  and  so  long  as  they  are  satisfied  that  such 
association  or  person  is  competent  to  certify  as  aforesaid,  may, 
if  they  shall  judge  it  to  be  to  the  public  advantage,  permit  such 
association  or  person  to  register  such  mark  as  a  trade  mark  in 
respect  of  such  goods,  whether  or  not  such  association  or  person 
be  a  trading  association  or  trader  or  possessed  of  a  goodwill  in 
connection  with  such  certifying." 

SEC.  64.    Subsection  (10)  (a)  shall  be  repealed. 

In  subsection  (10)  (c)  the  word  "word"  shall  be  omitted. 


GREAT  BRITAIN  393 

MERCHANDISE  MARKS  ACT  [OF  AUGUST  23]  1887 

CHAPTER  28 
Short  Title 

1.  This  Act  may  be  cited  as  the  Merchandise  Marks  Act, 
1887. 

Offences  As  to  Trade  Marks  and  Trade  Descriptions 

2.  (1)  Every  person  who — 

(a)  forges  any  trade  mark;  or 

(b)  falsely  applies  to  goods  any  trade  mark  or  any  mark  so 
nearly  resembling  a  trade  mark  as  to  be  calculated  to  deceive ;  or 

(c)  makes  any  die,  block,  machine,  or  other  instrument  for 
the  purpose  of  forging,  or  of  being  used  for  forging,  a  trade 
mark;  or 

(d)  applies  any  false  trade  description  to  goods;  or 

(e)  disposes  of  or  has  in  his  possession  any  die,  block, 
machine,  or  other  instrument  for  the  purpose  of  forging  a  trade 
mark;  or 

(f)  causes  any  of  the  things  above  in  this  section  men- 
tioned to  be  done, 

shall,  subject  to  the  provisions  of  this  Act,  and  unless  he  proves 
that  he  acted  without  intent  to  defraud,  be  guilty  of  an  offence 
against  this  Act. 

(2)  Every  person  who  sells,  or  exposes  for,  or  has  in  his 
possession  for,  sale,  or  any  purpose  of  trade  or  manufacture, 
any  goods  or  things  to  which  any  forged  trade  mark  or  false 
trade  description  is  applied,  or  to  which  any  trade  mark  or  mark 
so  nearly  resembling  a  trade  mark  as  to  be  calculated  to  deceive 
is  falsely  applied,  as  the  case  may  be,  shall,  unless  he  proves — 

(a)  That  having  taken  all  reasonable  precautions  against 
committing  an  offence  against  this  Act,  he  had  at  the  time  of 
the  commission  of  the  alleged  offence  no  reason  to  suspect  the 
genuineness  of  the  trade  mark,  mark,  or  trade  description ;  and 

(b)  That  on  demand  made  by  or  on  behalf  of  the  prosecu- 
tor, he  gave  all  the  information  in  his  power  with  respect  to 
the  persons  from  whom  he  obtained  such  goods  or  things;  or 

(c)  That  otherwise  he  had  acted  innocently; 
be  guilty  of  an  offence  against  this  Act. 

(3)  Every  person  guilty  of  an  offence  against  this  Act  shall 
be  liable — 

(i)  on  conviction  on  indictment,  to  imprisonment,  with  or 
without  hard  labour,  for  a  term  not  exceeding  two  years,  or  to 
fine,  or  to  both  imprisonment  and  fine ;  and 

(ii)  on  summary  conviction  to  imprisonment,  with  or  with- 
out hard  labour,  for  a  term  not  exceeding  four  months,  or  to  a 


394  GREAT  BRITAIN 

fine  not  exceeding  twenty  pounds,  and  in  the  case  of  a  second 
or  subsequent  conviction  to  imprisonment,  with  or  without  hard 
labour,  for  a  term  not  exceeding  six  months,  or  to  a  fine  not 
exceeding  fifty  pounds ;  and 

(iii)  in  any  case,  to  forfeit  to  Her  Majesty  every  chattel, 
article,  instrument,  or  thing  by  means  of  or  in  relation  to  which 
the  offence  has  been  committed. 

(4)  The  court  before  whom  any  person  is  convicted  under 
this  section  may  order  any  forfeited  articles  to  be  destroyed  or 
otherwise  disposed  of  as  the  court  thinks  fit. 

(5)  If  any  person  feels  aggrieved  by  any  conviction  made 
by  a  court  of  summary  jurisdiction,  he  may  appeal  therefrom 
to  a  court  of  quarter  sessions. 

(6)  Any  offence  for  which  a  person  is  under  this  Act  liable 
to  punishment  on  summary  conviction  may  be  prosecuted,  and 
any  articles  liable  to  be  forfeited  under  this  Act  by  a  court  of 
summary  jurisdiction  may  be  forfeited,  in  manner  provided 
by  the  Summary  Jurisdiction  Acts:    Provided  that  a  person 
charged  with  an  offence  under  this  section  before  a  court  of 
summary  jurisdiction  shall,  on  appearing  before  the  court,  and 
before  the  charge  is  gone  into,  be  informed  of  his  right  to  be 
tried  on  indictment,  and  if  he  requires  be  so  tried  accordingly. 

Definitions 

3.     (1)  For  the  purposes  of  this  Act — 

The  expression  " trade  mark"  means  a  trade  mark  regis- 
tered in  the  register  of  trade  marks  kept  under  the  Patents, 
Designs,  and  Trade  Marks  Act,  1883,  and  includes  any  trade 
mark  which,  either  with  or  without  registration,  is  protected 
by  law  in  any  British  possession  or  foreign  State  to  which  the 
provisions  of  the  one  hundred  and  third  section  of  the  Patents, 
Designs,  and  Trade  Marks  Act,  1883,  are,  under  Order  in  Coun- 
cil, for  the  time  being  applicable : 

The  expression  "trade  description"  means  any  descrip- 
tion, statement,  or  other  indication,  direct  or  indirect, 

(a)  as  to  the  number,  quantity,  measure,  gauge,  or  weight 
of  any  goods,  or 

(b)  as  to  the  place  or  country  in  which  any  goods  were 
made  or  produced,  or 

(c)  as  to  the  mode  of  manufacturing  or  producing  any 
goods,  or 

(d)  as  to  the  material  of  which  any  goods  are  composed,  or 

(e)  as  to  any  goods  being  the  subject  of  an  existing  patent, 
privilege,  or  copyright, 

and  the  use  of  any  figure,  word,  or  mark  which,  according  to 
the  custom  of  the  trade,  is  commonly  taken  to  be  an  indication 


GREAT  BRITAIN  395 

of  any  of  the  above  matters,  shall  be  deemed  to  be  a  trade 
description  within  the  meaning  of  this  Act: 

The  expression  "false  trade  description"  means  a  trade 
description  which  is  false  in  a  material  respect  as  regards  the 
goods  to  which  it  is  applied,  and  includes  every  alteration  of 
a  trade  description,  whether  by  way  of  addition,  effacement, 
or  otherwise,  where  that  alteration  makes  the  description  false 
in  a  material  respect,  and  the  fact  that  a  trade  description  is 
a  trade  mark,  or  part  of  a  trade  mark,  shall  not  prevent  such 
trade  description  being  a  false  trade  description  within  the 
meaning  of  this  Act: 

The  expression  "goods"  means  anything  which  is  the  sub- 
ject of  trade,  manufacture,  or  merchandise: 

The  expressions  "person,"  "manufacturer,  dealer,  or 
trader,"  and  "proprietor"  include  any  body  of  persons  cor- 
porate or  unincorporate : 

The  expression  "name"  includes  any  abbreviation  of  a 
name. 

(2)  The  provisions  of  this  Act  respecting  the  application 
of  a  false  trade  description  to  goods  shall  extend  to  the  appli- 
cation to  goods  of  any  such  figures,  words,  or  marks,  or  arrange- 
ment or  combination  thereof,  whether  including  a  trade  mark 
or  not,  as  are  reasonably  calculated  to  lead  persons  to  believe 
that  the  goods  are  the  manufacture  or  merchandise  of  some 
person  other  than  the  person  whose  manufacture  or  merchan- 
dise they  really  are. 

(3)  The  provisions  of  this  Act  respecting  the  application 
of  a  false  trade  description  to  goods,  or  respecting  goods  to 
which  a  false  trade  description  is  applied,  shall  extend  to  the 
application  to  goods  of  any  false  name  or  initials  of  a  person, 
and  to  goods  with  the  false  name  or  initials  of  a  person  applied, 
in  like  manner  as  if  such  name  or  initials  were  a  trade  descrip- 
tion, and  for  the  purpose  of  this  enactment  the  expression  false 
name  or  initials  means  as  applied  to  any  goods,  any  name  or 
initials  of  a  person  which — 

(a)  are  not  a  trade  mark,  or  part  of  a  trade  mark,  and 

(b)  are  identical  with,  or  a  colourable  imitation  of  the 
name  or  initials  of  a  person  carrying  on  business  in  connexion 
with  goods  of  the  same  description,  and  not  having  authorised 
the  use  of  such  name  or  initials,  and 

(c)  are  either  those  of  a  fictitious  person  or  of  some  person 
not  bona  fide  carrying  on  business  in  connexion  with  such  goods. 

Forging  Trade  Mark 

4.  A  person  shall  be  deemed  to  forge  a  trade  mark  who 
either — 


396  GREAT  BRITAIN 

(a)  without  the  assent  of  the  proprietor  of  the  trade  mark 
makes  that  trade  mark  or  a  mark  so  nearly  resembling  that 
trade  mark  as  to  be  calculated  to  deceive ;  or 

(b)  falsifies  any  genuine  trade  mark,  whether  by  altera- 
tion, addition,  effacement,  or  otherwise; 

and  any  trade  mark  or  mark  so  made  or  falsified  is  in  this  Act 
referred  to  as  a  forged  trade  mark. 

Provided  that  in  any  prosecution  for  forging  a  trade  mark 
the  burden  of  proving  the  assent  of  the  proprietor  shall  lie  on 
the  defendant. 

Applying  Marks  and  Descriptions 

5.  (1)  A  person  shall  be  deemed  to  apply  a  trade  mark  or 
mark  or  trade  description  to  goods  who — 

(a)  applies  it  to  the  goods  themselves;  or 

(b)  applies  it  to  any  covering,  label,  reel,  or  other  thing 
in  or  with  which  the  goods  are  sold  or  exposed  or  had  in  pos- 
session for  any  purpose  of  sale,  trade,  or  manufacture ;  or 

(c)  places,  encloses,  or  annexes  any  goods  which  are  sold 
or  exposed  or  had  in  possession  for  any  purpose  of  sale,  trade, 
or  manufacture,  in,  with,  or  to  any  covering,  label,  reel,  or  other 
thing  to  which  a  trade  mark  or  trade  description  has  been 
applied;  or 

(d)  uses  a  trade  mark  or  mark  or  trade  description  in  any 
manner  calculated  to  lead  to  the  belief  that  the  goods  in  con- 
nexion with  which  it  is  used  are  designated  or  described  by  that 
trade  mark  or  mark  or  trade  description. 

(2)  The  expression  " covering"  includes  any  stopper,  cask, 
bottle,  vessel,  box,  cover,  capsule,  case,  frame,  or  wrapper ;  and 
the  expression  "label"  includes  any  band  or  ticket. 

A  trade  mark,  or  mark,  or  trade  description,  shall  be 
deemed  to  be  applied  whether  it  is  woven,  impressed,  or  other- 
wise worked  into,  or  annexed,  or  affixed  to  the  goods,  or  to  any 
covering,  label,  reel,  or  other  thing. 

(3)  A  person  shall  be  deemed  to  falsely  apply  to  goods  a 
trade  mark  or  mark,  who  without  the  assent  of  the  proprietor 
of  a  trade  mark  applies  such  trade  mark,  or  a  mark  so  nearly 
resembling  it  as  to  be  calculated  to  deceive,  but  in  any  prosecu- 
tion for  falsely  applying  a  trade  mark  or  mark  to  goods  the 
burden  of  proving  the  assent  of  the  proprietor  shall  lie  on  the 
defendant. 

Exemption  of  Certain  Persons  Employed  in  Ordinary 
Course  of  Business 

6.  Where  a  defendant  is  charged  with  making  any  die, 
block,  machine,  or  other  instrument  for  the  purpose  of  forging, 


GREAT  BRITAIN  397 

or  being  used  for  forging,  a  trade  mark,  or  with  falsely  apply- 
ing to  goods  any  trade  mark  or  any  mark  so  nearly  resembling 
a  trade  mark  as  to  be  calculated  to  deceive,  or  with  applying 
to  goods  any  false  trade  description,  or  causing  any  of  the 
things  in  this  section  mentioned  to  be  done,  and  proves — 

(a)  That  in  the   ordinary  course   of  his  business  he   is 
employed,  on  behalf  of  other  persons,  to  make  dies,  blocks, 
machines,  or  other  instruments  for  making,  or  being  used  in 
making,  trade  marks,  or  as  the  case  may  be,  to  apply  marks  or 
descriptions  to  goods,  and  that  in  the  case  which  is  the  subject 
of  the  charge  he  was  so  employed  by  some  person  resident  in 
the  United  Kingdom,  and  was  not  interested  in  the  goods  by 
way  of  profit  or  commission  dependent  on  the  sale  of  such 
goods;  and 

(b)  That  he  took  reasonable  precautions  against  commit- 
ting the  off ence  charged ;  and 

(c)  That  he  had,  at  the  time  of  the  commission  of  the 
alleged  offence,  no  reason  to  suspect  the  genuineness  of  the 
trade  mark,  mark,  or  trade  description;  and 

(d)  That  he  gave  to  the  prosecutor  all  the  information  in 
his  power  with  respect  to  the  persons  on  whose  behalf  the  trade 
mark,  mark,  or  description  was  applied — 

he  shall  be  discharged  from  the  prosecution,  but  shall  be  liable 
to  pay  the  costs  incurred  by  the  prosecutor,  unless  he  has  given 
due  notice  to  him  that  he  will  rely  on  the  above  defence. 

Application  of  Act  to  Watches 

7.  Where  a  watch  case  has  thereon  any  words  or  marks 
which  constitute,  or  are  by  common  repute  considered  as  con- 
stituting, a  description  of  the  country  in  which  the  watch  was 
made,  and  the  watch  bears  no  description  of  the  country  where 
it  was  made,  those  words  or  marks  shall  prima  facie  be  deemed 
to  be  a  description  of  that  country  within  the  meaning  of  this 
Act,  and  the  provisions  of  this  Act  with  respect  to  goods  to 
which  a  false  trade  description  has  been  applied,  and  with 
respect  to  selling  or  exposing  for  or  having  in  possession  for 
sale,  or  any  purpose  of  trade  or  manufacture,  goods  with  a 
false  trade  description,  shall  apply  accordingly,  and  for  the 
purposes  of  this  section  the  expression  " watch"  means  all  that 
portion  of  a  watch  which  is  not  the  watch  case. 

Mark  On  Watch  Case 

8.  (1)  Every  person  who  after  the  date  fixed  by  Order 
in  Council  sends  or  brings  a  watch  case,  whether  imported  or 
not,  to  any  assay  office  in  the  United  Kingdom  for  the  purpose 
of  being  assayed,  stamped,  or  marked,  shall  make  a  declaration 


398  GREAT  BRITAIN 

declaring  in  what  country  or  place  the  case  was  made.  If  it 
appears  by  such  declaration  that  the  watch  case  was  made  in 
some  country  or  place  out  of  the  United  Kingdom,  the  assay 
office  shall  place  on  the  case  such  a  mark  (differing  from  the 
mark  placed  by  the  office  on  a  watch  case  made  in  the  United 
Kingdom),  and  in  such  a  mode  as  may  be  from  time  to  time 
directed  by  Order  in  Council. 

(2)  The  declaration  may  be  made  before  an  officer  of  an 
assay  office,  appointed  in  that  behalf  by  the  office  (which  officer 
is  hereby  authorised  to  administer  such  a  declaration),  or  before 
a  justice  of  the  peace,  or  a  commissioner  having  power  to 
administer  oaths  in  the  Supreme  Court  of  Judicature  in  Eng- 
land or  Ireland,  or  in  the  Court  of  Session  in  Scotland,  and 
ehall  be  in  such  form  as  may  be  from  time  to  time  directed  by 
Order  in  Council. 

(3)  Every  person  who  makes  a  false  declaration  for  the 
purposes  of  this  section  shall  be  liable,  on  conviction  on  indict- 
ment, to  the  penalties  of  perjury,  and  on  summary  conviction 
to  a  fine  not  exceeding  twenty  pounds  for  each  offence. 

Trade  Marie,  How  Described  in  Pleading 

9.  In  any  indictment,  pleading,  proceeding,  or  document, 
in  which  any  trade  mark  or  forged  trade  mark  is  intended  to 
be  mentioned,  it  shall  be  sufficient,  without  further  description 
and  without  any  copy  or  facsimile,  to  state  that  trade  mark  or 
forged  trade  mark  to  be  a  trade  mark  or  forged  trade  mark. 

Rules  As  To  Evidence 

10.  In  any  prosecution  for  an  offence  against  this  Act, — 

(1)  A  defendant,  and  his  wife  or  her  husband,  as  the  case 
may  be,  may,  if  the  defendant  thinks  fit,  be  called  as  a  witness, 
and,  if  called,  shall  be  sworn  and  examined,  and  may  be  cross- 
examined  and  re-examined  in  like  manner  as  any  other  witness. 

(2)  In  the  case  of  imported  goods,  evidence  of  the  port  of 
shipment  shall  be  prima  facie  evidence  of  the  place  or  country 
in  which  the  goods  were  made  or  produced. 

Punishment  of  Accessories 

11.  Any  person  who,  being  within  the  United  Kingdom, 
procures,  counsels,  aids,  abets,  or  is  accessory  to  the  commis- 
sion, without  the  United  Kingdom,  of  any  act,  which,  if  com- 
mitted in  the  United  Kingdom,  would  under  this  Act  be  a  mis- 
demeanor, shall  be  guilty  of  that  misdemeanor  as  a  principal, 
and  be  liable  to  be  indicted,  proceeded  against,  tried,  and  con- 
victed in  any  county  or  place  in  the  United  Kingdom  in  which 
he  may  be,  as  if  the  misdemeanor  had  been  there  committed. 


GREAT  BRITAIN  399 

Search  Warrant 

12.  (1)  Where,  upon  information  of  an  offence  against 
this  Act,  a  justice  has  issued  either  a  summons  requiring  the 
defendant  charged  by  such  information  to  appear  to  answer 
to  the  same,  or  a  warrant  for  the  arrest  of  such  defendant,  and 
either  the  said  justice  on  or  after  issuing  the  summons  or  war- 
rant, or  any  other  justice,  is  satisfied  by  information  on  oath 
that  there  is  reasonable  cause  to  suspect  that  any  goods  or 
things  by  means  of  or  in  relation  to  which  such  offence  has  been 
committed  are  in  any  house  or  premises  of  the  defendant,  or 
otherwise  in  his  possession  or  under  his  control  in  any  place, 
such  justice  may  issue  a  warrant  under  his  hand  by  virtue  of 
which  it  shall  be  lawful  for  any  constable  named  or  referred  to 
in  the  warrant,  to  enter  such  house,  premises,  or  place  at  any 
reasonable  time  by  day,  and  to  search  there  for  and  seize  and 
take  away  those  goods  or  things ;  and  any  goods  or  things  seized 
under  any  such  warrant  shall  be  brought  before  a  court  of 
summary  jurisdiction  for  the  purpose  of  its  being  determined 
whether  the  same  are  or  are  not  liable  to  forfeiture  under  this 
Act. 

(2)  If  the  owner  of  any  goods  or  things  which,  if  the  owner 
thereof  had  been  convicted,  would  be  liable  to  forfeiture  under 
this  Act,  is  unknown  or  cannot  be  found,  an  information  or 
complaint  may  be  laid  for  the  purpose  only  of  enforcing  such 
forfeiture,  and  a  court  of  summary  jurisdiction  may  cause 
notice  to  be  advertised  stating  that,  unless  cause  is  shown  to 
the  contrary  at  the  time  and  place  named  in  the  notice,  such 
goods  or  things  will  be  forfeited,  and  at  such  time  and  place 
the  court,  unless  the  owner  or  any  person  on  his  behalf,  or  other 
person  interested  in  the  goods  or  things,  shows  cause  to  the 
contrary,  may  order  such  goods  or  things  or  any  of  them  to  be 
forfeited. 

(3)  Any  goods  or  things  forfeited  under  this  section,  or 
under  any  other  provision  of  this  Act,  may  be  destroyed  or 
otherwise  disposed  of,  in  such  manner  as  the  court  by  which  the 
same  are  forfeited  may  direct,  and  the  court  may,  out  of  any 
proceeds  which  may  be  realised  by  the  disposition  of  such  goods 
(all  trade  marks  and  trade  descriptions  being  first  obliterated), 
award  to  any  innocent  party  any  loss  he  may  have  innocently 
sustained  in  dealing  with  such  goods. 

Extension  of  22  &  23  Viet.  c.  17.  to  Offences  Under  This  Act 

13.  The  Act  of  the  session  of  the  twenty-second  and  twen- 
ty-third years  of  the  reign  of  Her  present  Majesty,  chapter 
seventeen,  intituled  "An  Act  to  prevent  vexatious  indictments 


400  GREAT  BRITAIN 

for  "certain  misdemeanours,"  shall  apply  to  any  offence  pun- 
ishable on  indictment  under  this  Act,  in  like  manner  as  if  such 
offence  were  one  of  the  offences  specified  in  section  one  of  that 
Act,  but  this  section  shall  not  apply  to  Scotland. 
Costs  of  Defence  or  Prosecution 

14.  On  any  prosecution  under  this  Act  the  court  may  order 
costs  to  be  paid  to  the  defendant  by  the  prosecutor,  or  to  the 
prosecutor  by  the  defendant,  having  regard  to  the  information 
given  by  and  the  conduct  of  the  defendant  and  prosecutor 
respectively. 

Limitation  of  Prosecution 

15.  No  prosecution  for  an  offence  against  this  Act  shall 
be  commenced  after  the  expiration  of  three  years  next  after  the 
commission  of  the  offence,  or  one  year  next  after  the  first  dis- 
covery thereof  by  the  prosecutor,  whichever  expiration  first 

happens. 

Prohibition  On  Importation 

16.  Whereas  it  is  expedient  to  make  further  provision  for 
prohibiting  the  importation  of  goods  which,  if  sold,  would  be 
liable  to  forfeiture  under  this  Act;  be  it  therefore  enacted  as 
follows : 

(1)  All  such  goods,  and  also  all  goods  of  foreign  manu- 
facture bearing  any  name  or  trade  mark  being  or  purporting 
to  be  the  name  or  trade  mark  of  any  manufacturer,  dealer,  or 
trader  in  the  United  Kingdom,  unless  such  name  or  trade  mark 
is  accompanied  by  a  definite  indication  of  the  country  in  which 
the  goods  were  made  or  produced,  are  hereby  prohibited  to  be 
imported  into  the  United  Kingdom,  and,  subject  to  the  pro- 
visions of  this  section,  shall  be  included  among  goods  prohibited 
to  be  imported  as  if  they  were  specified  in  section  forty-two 
of  the  Customs  Consolidation  Act,  1876. 

(2)  Before  detaining  any  such  goods,  or  taking  any  fur- 
ther proceedings  with  a  view  to  the  forfeiture  thereof  under 
the  law  relating  to  the  Customs,  the  Commissioners  of  Customs 
may  require  the  regulations  under  this  section,  whether  as  to 
information,  security,  conditions,  or  other  matters,  to  be  com- 
plied with,  and  may  satisfy  themselves  in  accordance  with  those 
regulations  that  the  goods  are  such  as  are  prohibited  by  this 
section  to  be  imported. 

(3)  The  Commissioners  of  Customs  may  from  time  to  time 
make,  revoke  and  vary,  regulations,  either  general  or  special, 
respecting  the  detention  and  forfeiture  of  goods  the  importa- 
tion of  which  is  prohibited  by  this  section,  and  the  conditions, 
if  any,  to  be  fulfilled  before  such  detention  and  forfeiture,  and 
may  by  such  regulations  determine  the  information,  notices, 


GREAT  BRITAIN  401 

and  security  to  be  given,  and  the  evidence  requisite  for  any  of 
the  purposes  of  this  section,  and  the  mode  of  verification  of 
such  evidence. 

(4)  Where  there  is  on  any  goods  a  name  which  is  identical 
with  or  a  colourable  imitation  of  the  name  of  a  place  in  the 
United  Kingdom,  that  name,  unless  accompanied  by  the  name 
of  the  country  in  which  such  place  is  situate,  shall  be  treated 
for  the  purposes  of  this  section  as  if  it  were  the  name  of  a 
place  in  the  United  Kingdom. 

(5)  Such  regulations  may  apply  to  all  goods  the  importa- 
tion of  which  is  prohibited  by  this  section,  or  different  regula- 
tions may  be  made  respecting  different  classes  of  such  gooda 
or  of  offences  in  relation  to  such  goods. 

(6)  The  Commissioners   of  Customs,  in  making  and  in 
administering  the  regulations,  and  generally  in  the  administra- 
tion of  this  section,  whether  in  the  exercise  of  any  discretion 
or  opinion,  or  otherwise,  shall  act  under  the  control  of  the  Com- 
missioners of  Her  Majesty's  Treasury. 

(7)  The  regulations  may  provide  for  the  informant  reim- 
bursing the  Commissioners  of  Customs  all  expenses  and  dam- 
ages incurred  in  respect  of  any  detention  made  on  his  infor- 
mation, and  of  any  proceedings  consequent  on  such  detention. 

(8)  All  regulations  under  this  section  shall  be  published 
in  the  " London  Gazette"  and  in  the  " Board  of  Trade  Journal." 

(9)  This  section  shall  have  effect  as  if  it  were  part  of  the 
Customs  Consolidation  Act,  1876,  and  shall  accordingly  apply 
to  the  Isle  of  Man  as  if  it  were  part  of  the  United  Kingdom. 

(10)  Section   two    of   the   Revenue   Act,    1883,    shall   be 
repealed  as  from  a  day  fixed  by  regulations  under  this  section, 
not  being  later  than  the  first  day  of  January  one  thousand  eight 
hundred  and  eighty-eight,  without  prejudice  to  anything  done 
or  suffered  thereunder. 

Implied  Warranty  on  Sale  of  Marked  Goods 

17.  On  the  sale  or  in  the  contract  for  the  sale  of  any  goods 
to  which  a  trade  mark,  or  mark,  or  trade  description  has  been 
applied,  the  vendor  shall  be  deemed  to  warrant  that  the  mark 
is  a  genuine  trade  mark  and  not  forged  or  falsely  applied,  or 
that  the  trade  description  is  not  a  false  trade  description  within 
the  meaning  of  this  Act,  unless  the  contrary  is  expressed  in 
some  writing  signed  by  or  on  behalf  of  the  vendor  and  delivered 
at  the  time  of  the  sale  or  contract  to  and  accepted  by  the  vendee. 

Provisions  of  Act  as  to  False  Description  Not  to  Apply 
in  Certain  Cases 

18.  Where,  at  the  passing  of  this  Act,  a  trade  description 


402  GREAT  BRITAIN 

is  lawfully  and  generally  applied  to  goods  of  a  particular  class, 
or  manufactured  by  a  particular  method,  to  indicate  the  particu- 
lar class  or  method  of  manufacture  of  such  goods,  the  provisions 
of  this  Act  with  respect  to  false  trade  descriptions  shall  not 
apply  to  such  trade  description  when  so  applied :  Provided  that 
where  such  trade  description  includes  the  name  of  a  place  or 
country,  and  is  calculated  to  mislead  as  to  the  place  or  country 
where  the  goods  to  which  it  is  applied  were  actually  made  or 
produced,  and  the  goods  are  not  actually  made  or  produced  in 
that  place  or  country,  this  section  shall  not  apply  unless  there 
is  added  to  the  trade  description,  immediately  before  or  after 
the  name  of  that  place  or  country,  in  an  equally  conspicuous 
manner,  with  that  name,  the  name  of  the  place  or  country  in 
which  the  goods  were  actually  made  or  produced,  with  a  state- 
ment that  they  were  made  or  produced  there. 

Savings 

19.  (1)  This  Act  shall  not  exempt  any  person  from  any 
action,  suit,  or  other  proceeding  which  might,  but  for  the  pro- 
visions of  this  Act,  be  brought  against  him. 

(2)  Nothing  in  this  Act  shall  entitle  any  person  to  refuse 
to  make  a  complete  discovery,  or  to  answer  any  question  or 
interrogatory  in  any  action,  but  such  discovery  or  answer  shall 
not  be  admissible  in  evidence  against  such  person  in  any  prose- 
cution for  an  offence  against  this  Act. 

(3)  Nothing  in  this  Act  shall  be  construed  so  as  to  render 
liable  to  any  prosecution  or  punishment  any  servant  of  a  master 
resident  in  the  United  Kingdom  who  bona  fide  acts  in  obedience 
to  the  instructions  of  such  master,  and,  on  demand  made  by  or 
on  behalf  of  the  prosecutor,  has  given  full  information  as  to 
his  master. 

False  Representation  as  to  Royal  Warrant 

20.  Any  person  who  falsely  represents  that  any  goods  are 
made  by  a  person  holding  a  Royal  Warrant,  or  for  the  service 
of  Her  Majesty,  or  any  of  the  Royal  Family,  or  any  Govern- 
ment department,  shall  be  liable,  on  summary  conviction,  to  a 
penalty  not  exceeding  twenty  pounds. 

Application  of  Act  to  Scotland 

21.  In  the  application  of  this  Act  to  Scotland  the  follow- 
ing modifications  shall  be  made : — 

The  expression  "Summary  Jurisdiction  Acts"  means  the 
Summary  Procedure  Act,  1864,  and  any  Acts  amending  the 
same. 

The  expression  "justice"  means  sheriff. 

The  expression  "court  of  summary  jurisdiction"  means  the 


GREAT  BRITAIN  403 

Sheriff  Court,  and  all  jurisdiction  necessary  for  the  purpose 
of  this  Act  is  hereby  conferred  on  sheriffs. 

Application  of  Act  to  Ireland 

22.  In  the  application  of  this  Act  to  Ireland,  the  following 
modifications  shall  be  made: — 

The  expression  " Summary  Jurisdiction  Acts,"  means,  so 
far  as  respects  the  police  district  of  Dublin  metropolis,  the  Acts 
regulating  the  powers  and  duties  of  justices  of  the  peace  of 
such  district,  and  as  regards  the  rest  of  Ireland  means  the  Petty 
Sessions  (Ireland)  Act,  1851,  and  any  Act  amending  the  same. 

The  expression  "court  of  summary  jurisdiction"  means 
justices  acting  under  those  Acts. 

Repeal  of  25  &  26  Viet.  c.  88 

23.  The  Merchandise  Marks  Act,  1862,  is  hereby  repealed, 
and  any  unrepealed  enactment  referring  to  any  enactment  so 
repealed  shall  be  construed  to  apply  to  the  corresponding  pro- 
vision of  this  Act ;  provided  that  this  repeal  shall  not  affect — 

(a)  any  penalty,  forfeiture,  or  punishment  incurred  in  re- 
spect of  any  offence  committed  against  any  enactment  hereby 
repealed;  nor 

(b)  the  institution  or  continuance  of  any  proceeding  or 
other  remedy  under  any  enactment  so  repealed  for  the  recovery 
of  any  penalty  incurred,  or  for  the  punishment  of  any  offence 
committed,  before  the  commencement  of  this  Act;  nor 

(c)  any  right,  privilege,  liability,  or  obligation  acquired, 
accrued,  or  incurred  under  any  enactment  hereby  repealed. 


THE  PATENTS,  DESIGNS,  AND  TRADE  MARKS  ACT 
[OF  AUGUST  25],  1883 


PARTY.    GENERAL 

PATENT  OFFICE  AND  PROCEEDINGS  THEEEAT 
Patent  Office 

82.  (1)  The  Treasury  may  provide,  for  the  purposes  of 
this  Act,  an  office  with  all  requisite  buildings  and  conveniences 
which  shall  be  called,  and  is  in  this  Act  referred  to  as,  the  Patent 
Office. 

(2)  Until  a  new  patent  office  is  provided,  the  offices  of  the 
Commissioners  of  Patents  for  inventions  and  for  the  registra- 
tion of  designs  and  trade  marks  existing  at  the  commencement 
of  this  Act  shall  be  the  patent  office  within  the  meaning  of  this 
Act. 


404  GREAT  BRITAIN 

(3)  The  Patent  Office  shall  be  under  the  immediate  control 
of  an  officer  called  the  Comptroller-General  of  Patents,  Designs, 
and  Trade  Marks,  who  shall  act  under  the  superintendence  and 
direction  of  the  Board  of  Trade. 

(4)  Any  act  or  thing  directed  to  be  done  by  or  to  the  Comp- 
troller may,  in  his  absence,  be  done  by  or  to  any  officer  for  the 
time  being  in  that  behalf  authorized  by  the  Board  of  Trade. 

Officers  and  Clerks 

83.  (1)  The  Board  of  Trade  may  at  any  time  after  the 
passing  of  this  Act,  and  from  time  to  time,  subject  to  the  ap- 
proval of  the  Treasury,  appoint  the  Comptroller-General  of 
Patents,  Designs,  and  Trade  Marks,  and  so  many  examiners  and 
other  officers  and  clerks  with  such  designations  and  duties  as 
the  Board  of  Trade  think  fit,  and  may  from  time  to  time  remove 
any  of  those  officers  and  clerks. 

(2)  The  salaries  of  those  officers  and  clerks  shall  be  ap- 
pointed by  the  Board  of  Trade,  with  the  concurrence  of  the 
Treasury,  and  the  same  and  the  other  expenses  of  the  execution 
of  this  Act  shall  be  paid  out  of  money  provided  by  Parliament. 

Seal  of  Patent  Office 

84.  There  shall  be  a  seal  for  the  Patent  Office,  and  impres- 
sions thereof  shall  be  judicially  noticed  and  admitted  in  evidence. 


PATENTS  AND  DESIGNS  ACT  [OF  AUGUST  28],  1907 

CHAPTER  29 

AN  ACT  TO  CONSOLIDATE  THE  ENACTMENTS  RELATING  TO  PATENTS 
FOB  INVENTIONS  AND  THE  REGISTRATION  OF  DESIGNS  AND  CER- 
TAIN ENACTMENTS  RELATING  TO  TRADE  MARKS 

•  ••••••••• 

PART  III 

GENERAL 
•  ••••«»... 

International  and  Colonial  Arrangements 
91.  (1)  If  His  Majesty  is  pleased  to  make  any  arrange- 
ment with  the  government  of  any  foreign  state  for  mutual  pro- 
tection of  ...  trade  marks,  then  any  person  who  has  applied 
for  protection  for  any  .  .  .  trade  mark  in  that  state  shall  be 
entitled  ...  to  registration  of  his  .  .  .  trade  mark  under  this 
Act  or  the  Trade  Marks  Act,  1905,  in  priority  to  other  appli- 
cants; and  the  .  .  .  registration  shall  have  the  same  date  of 


GREAT  BRITAIN  405 

the  application  in  the  foreign  state. 
Provided  that — 

(a)  The  application  is  made,  in  the  case  of  a  .   .   .  trade 
mark  within  four  months,  from  the  protection  in  the  foreign 
state;  and 

(b)  Nothing  in  this  section  shall  entitle  the  .  .  .  proprietor 
of  the  .   .   .  trade  mark  to  recover  damages  for  infringements 
happening  prior  to  the  actual  date  on  which  his   .    .    .  trade 
mark  is  registered  in  this  country. 

(2)  The  .  .  .  registration  of  a  .  .   .  trade  mark  shall  not 
be  invalidated — 

(c)  In  the  case  of  a  trade  mark,  by  reason  only  of  the  use 
of  the  trade  mark,  in  the  United  Kingdom  or  the  Isle  of  Man 
during  the  period  specified  in  this  section  as  that  within  which 
the  application  may  be  made. 

(3)  The  application  for  .    .   .  the  registration  of  a  .    .    . 
trade  mark  under  this  section  must  be  made  in  the  same  manner 
as  an  ordinary  application  under  .   .   .  the  Trade  Marks  Act, 
1905:  Provided  that— 

(b)  In  the  case  of  trade  marks,  any  trade  mark  the  regis- 
tration of  which  has  been  duly  applied  for  in  the  country  of 
origin  may  be  registered  under  the  Trade  Marks  Act,  1905. 

(4)  The  provisions  of  this  section  shall  apply  only  in  the 
case  of  those  foreign  states  with  respect  to  which  His  Majesty 
by  Order  in  Council  declares  them  to  be  applicable,  and  so  long 
only  as  the  Order  in  Council  continues  in  force  with  respect  to 
that  state. 

(5)  Where  it  is  made  to  appear  to  His  Majesty  that  the 
legislature  of  any  British  possession  has  made  satisfactory  pro- 
vision for  the  protection  of  ...  trade  marks  .   .   .  registered 
in  this  country,  it  shall  be  lawful  for  His  Majesty,  by  Order  in 
Council,  to  apply  the  provisions  of  this  section  to  that  posses- 
sion, with  such  variations  or  additions,  if  any,  as  may  be  stated 
in  the  Order. 


GREECE 

LAW  OF  FEBRUARY  10/22,  1893 

ARTICLE  1.  Any  distinctive  mark  of  the  products  of  indus- 
try, agriculture,  stock-raising,  and,  in  general,  of  commerce  is 
considered  as  a  mark  of  manufacture  or  of  commerce. 

The  mark  may  be  affixed  to  the  objects  themselves  or  on 
their  wrappings;  the  name  of  a  tradesman,  merchant,  or  busi- 
ness establishment  shall  be  considered  as  such. 

ART.  2.  The  use  of  a  mark  is  optional ;  but  no  one  has  the 
right  to  legal  protection  in  the  exclusive  use  of  a  mark  if  he 
has  not  deposited  three  copies  thereof  and  a  typographic  cut  in 
the  archives  of  the  Civil  Tribunal  of  First  Instance  of  the  dis- 
trict in  which  he  has  his  principal  establishment  or,  in  default  of 
this,  an  establishment  and  his  domicile. 

The  legal  protection  is  assured  for  ten  years,  counting  from 
the  day  of  the  deposit;  as  result  of  a  new  deposit  with  like 
formalities  this  period  shall  be  extended  for  a  new  term  of  ten 
years. 

He  that  has  publicly  made  use  of  a  mark,  first  and  for  one 
year  without  interruption,  alone  has  the  right  to  make  deposit 
thereof. 

For  each  deposit  there  shall  be  collected  a  fee  of  sixty 
drachmas,  gold. 

ART.  3.  Minutes  of  each  deposit  shall  be  entered  in  a  regis- 
ter kept  for  this  purpose;  this  record  shall  be  numbered  and 
signed  by  the  depositor  or  by  his  attorney,  authorized  by  a 
special  power,  and  by  the  Registrar. 

The  record  shall  mention  the  day  and  the  hour  of  the  de- 
posit and  the  class  of  industry  or  trade  for  which  the  mark  is 
intended;  the  power  of  attorney  itself  and  the  receipt  of  the 
Treasury  showing  the  payment  of  the  fee  prescribed  in  the  pre- 
ceding article  shall  be  annexed  thereto. 

A  stamp  of  two  drachmas  shall  be  affixed  to  the  record. 

The  records  of  deposit  shall  be  at  the  disposition  of  who- 
ever wishes  to  consult  them  or  request  a  copy  therefrom. 

One  of  the  copies  deposited  shall  be  preserved  in  the  ar- 
chives of  the  tribunal;  the  second,  endorsed  by  the  Registrar, 
shall  be  affixed  to  a  copy  on  unstamped  paper  of  the  record, 
and  sent  immediately  to  the  depositor  or  to  his  attorney;  the 
third,  accompanied  by  a  copy  also  on  unstamped  paper  of  the 
record  and  by  a  cliche,  deposited  in  the  archives  of  the  Civil 


GREECE  407 

Tribunal  of  First  Instance  of  the  School  of  Industrial  Arts. 

ART.  4.  The  Director  shall  be  obliged  to  enter  the  deposit 
of  the  mark  in  special  registers,  according  to  the  class  of  indus- 
try or  trade ;  the  name  of  the  depositor  shall  be  inscribed  in  an 
alphabetic  index  kept  for  public  inspection;  the  mark  shall  be 
exposed  in  a  public  room;  and  a  declaration  of  the  deposit,  as 
well  as  a  summary  description  of  the  product  and  of  the  mark, 
shall  be  inserted  in  the  Official  Journal  with  a  typographic  re- 
production thereof,  and  this  within  a  maximum  period  of  two 
weeks,  dated  from  the  day  of  the  remittance  of  the  documents 
to  the  Director  of  the  School  of  Industrial  Arts. 

ART.  5.  Property  in  marks  of  manufacture  and  of  com- 
merce may  not  be  assigned  except  with  the  right  of  exploitation 
of  the  product.  This  transfer  shall  have  no  effect  as  to  third 
parties  until  after  the  deposit  and  publication  of  an  extract  of 
the  deed  that  shall  verify  it,  under  formalities  prescribed  by 
Arts.  2  and  4. 

This  transfer  shall  likewise  be  noted  on  the  margin  of  the 
record  of  the  deposit  of  the  mark,  and  this  annotation  shall  be 
invested  with  the  signatures  required  by  Art.  3.  It  shall  be 
subject  to  a  fee  of  thirty  drachmas,  gold,  whereof  the  receipt 
shall  be  affixed  to  the  record. 

ART.  6.  He  shall  be  subject  to  imprisonment  for  six  months 
at  most,  and  a  fine  not  exceeding  one  thousand  drachmas,  or 
either  of  these  penalties : 

1.  That  shall  have  counterfeited  a  mark  or  made  fraudu- 
lent use  of  a  counterfeited  mark ; 

2.  That  shall  have  fraudulently  affixed  to  one  of  his  prod- 
ucts a  mark  belonging  to  another; 

3.  That,  without  counterfeiting  a  mark,  shall  have  made 
an  imitation  thereof  of  a  nature  to  deceive  buyers,  or  shall  have 
made  use  of  such  a  mark; 

4.  That  shall  knowingly  have  sold  or  put  in  circulation  an 
object  invested  with  a  counterfeited  mark. 

Public  prosecution  resulting  from  offences  contemplated  by 
the  present  article  may  not  be  brought  until  ten  days  after  the 
insertion  in  the  Official  Journal  provided  by  Art.  4,  and  for  an 
act  subsequent  to  the  expiration  of  this  term. 

However,  the  depositor  may,  from  the  day  following  the 
deposit,  prosecute  by  a  civil  action  for  the  judicial  recognition 
of  his  right  to  the  exclusive  use  to  the  mark,  and  then  offences 
committed  subsequent  to  the  notice  of  the  civil  action  may  be 
prosecuted  even  before  the  publication  in  the  Official  Journal. 

ART.  7.  The  penalties  above  provided  may  be  doubled  in 
case  of  repetition,  if  this  occurs  within  the  five  years  that  follow 


408  GREECE 

the  first  offence. 

ART.  8.  The  trial  court  shall  order  that  every  judgment 
be  inserted,  at  the  expense  of  the  party  condemned,  in  two 
journals  of  the  capital,  if  the  offence  has  been  committed  at 
Athens,  or,  if  not,  in  one  journal  at  Athens  and  in  another  at 
the  place  where  the  offence  was  committed. 

ART.  9.  The  Court  shall  order  always,  even  in  case  of  ac- 
quittal, the  destruction  of  the  counterfeited  marks  seized ;  if  the 
mark  cannot  be  destroyed  without  injuring  the  object  to  which 
it  is  affixed,  the  Court  may  order  the  destruction  of  the  object 
itself,  totally  or  partially. 

ART.  10.  In  addition  to  the  penalties  above  provided,  who- 
ever has  infringed  the  present  law  shall  be  held  to  repair  the 
damage  that  he  has  caused ;  merchandise  bearing  a  counterfeited 
mark  and  the  utensils  having  served  to  perpetrate  the  offence 
may  be  awarded  by  the  court  to  the  aggrieved  party  if  the  con- 
demned party  is  the  owner  thereof,  and  if  the  injured  party  has 
begun  action  for  damages  and  accepted  the  said  articles,  on 
summary  appraisement  made  by  the  court,  for  all  or  part  of  the 
claim. 

ART.  11.  Public  prosecution  cannot  be  taken  except  on  the 
complaint  of  the  injured  party. 

ART.  12.  The  deposit  of  a  mark  that  shall  not  have  been 
made  in  conformity  with  the  present  law  shall  be,  on  application 
of  any  interested  third  party,  declared  null  by  the  court  by 
whose  clerk  it  may  have  been  effected.  The  extract  of  the  judg- 
ment shall  be  inscribed  at  the  instance  of  the  applicant,  on  the 
margin  of  the  record,  within  a  period  of  one  month,  dating  from 
the  day  on  which  it  shall  have  acquired  the  force  of  res  adju- 
dicata,  under  penalty  of  a  fine  of  twenty-five  drachmas,  at  least. 

All  private  suits  resulting  from  an  action  based  on  the 
present  law  shall  be  judged  by  tribunals  of  first  instance  as 
commercial  matters  when  they  shall  not  have  been  lodged  simul- 
taneously with  the  public  action  before  the  correctional  tribunal. 

ART.  13.  Foreigners  or  Greeks  that  carry  on  outside  of 
Greece  an  industry  or  business  shall  enjoy  the  advantages  of 
the  present  law  if,  in  the  country  where  their  establishments 
are  situated,  there  exist  a  law  protecting  marks  of  manufacture 
and  commerce  and  a  diplomatic  convention  providing  reciprocity 
for  Greek  marks. 

However,  to  enjoy  the  benefit  of  this  protection  in  Greece, 
it  shall  be  necessary,  aside  from  the  deposit  of  the  mark: 

1.  To  produce  a  certificate  from  the  competent,  local  au- 
thority, legalized  by  the  Hellenic  consul,  evidencing  fulfillment 
of  the  formalities  of  deposit  prescribed  in  the  country  in  which 


GREECE  409 

the  establishment  of  the  applicant  shall  be  located; 

2.  To  elect  domicile  at  Athens  by  notarial  deed ; 

3.  To  declare  in  writing  that  the  depositor  submits  him- 
self to  the  jurisdiction  of  the  courts  of  Athens. 

The  effects  of  the  protection  in  Greece  shall  cease  if  the 
term  of  protection  accorded  by  law  become  expired,  or  if  the 
diplomatic  reciprocity  convention  cease  to  be  effective.  In  no 
case  shall  foreigners  or  Greeks  established  abroad  have,  in 
Greece,  for  their  marks  of  manufacture  or  of  commerce  rights 
more  extended  than  those  that  they  have  in  the  country  where 
their  establishments  are  situated. 

ART.  14.  Compensation  shall  be  paid  by  the  Public  Treas- 
ury to  the  clerks  of  the  tribunals  of  first  instance  in  the  sum  of 
two  drachmas  for  each  record  of  deposit,  and  to  the  Secretary 
of  the  School  of  Industrial  Arts  likewise  in  the  sum  of  two 
drachmas  for  each  mark  deposited.  These  employees  shall  sub- 
mit quarterly  reports,  vised  by  their  hierarchic  superiors,  to 
the  Minister  of  the  Interior,  who  shall  give  them  orders  for 
payment. 

ART.  15.  Any  provision  contrary  to  the  present  law  is 
repealed. 

ART.  16.  A  Royal  Ordinance  shall  regulate,  with  fuller  de- 
tails, the  deposit,  the  publication  and  the  exhibition  of  marks, 
as  well  as  whatever  concerns  the  execution  of  the  present  law. 


GRENADA 

This  Colony  has  no  proper  trade  mark  law. 
Merchandise  Marks  Ordinance,  1889,  No.  9,  substantially 
like  the  British  Merchandise  Marks  Act. 


GUATEMALA 

DECREE  NO.  441,  OF  MAY  13,  1899 

ARTICLE  1.  There  shall  be  considered  as  commercial  and 
industrial  marks:  Denominations  of  objects,  or  names  of  per- 
sons, under  a  particular  form,  emblems,  monograms,  engrav- 
ings or  prints,  seals,  vignettes  and  reliefs,  letters  and  numbers 
with  special  design,  containers  or  wrappers  of  objects,  and  any 
other  sign  by  which  it  is  desired  to  distinguish  the  productions 
of  a  factory  or  the  goods  of  a  business. 

ART.  2.  The  inscription  of  a  trade  mark  shall  have  as  its 
effect  the  concession  to  the  possessor  of  the  exclusive  right  to 
affix  it  to  the  respective  goods  on  their  wrappers  and  containers, 
as  well  as  that  of  printing  it  on  his  advertisements,  prospec- 
tuses, commercial  letters,  and  other  similar  papers. 

ART.  3.  There  shall  not  be  considered  as  manufacturers', 
commercial  and  industrial  marks: 

1)  Letters,  words,  names,  or  distinctives  that  are  or  should 
be  used  by  the  State  alone ; 

2)  The  form  given  to  the  product  by  the  manufacturer; 

3)  The  color  of  the  products; 

4)  Terms  or  locutions  that  have  passed  into  general  use; 

5)  Designations  usually  employed  to  indicate  the  nature 
of  the  products  or  the  class  to  which  they  belong;  and 

6)  Designs  or  expressions  contrary  to  morality. 

ART.  4.  The  absolute  ownership  of  the  mark,  as  well  as 
the  right  to  oppose  the  use  of  any  other  that  might,  directly 
or  indirectly,  produce  confusion  between  the  products,  shall 
belong  to  the  manufacturer  or  merchant  that  has  fulfilled  the 
requisites  demanded  by  this  law. 

ART.  5.  The  exclusive  ownership  of  a  mark  shall  be 
acquired  only  with  reference  to  industries  of  the  same  kind. 

ART.  6.  The  use  of  the  mark  is  optional.  Nevertheless 
it  may  be  compulsory  when  necessities  of  public  expedience  so 
require. 

ART.  7.  The  ownership  of  a  mark  shall  pass  to  the  heirs, 
and  may  be  also  transferred  by  contract  or  by  disposition  of 
last  Avill  and  testament,  provided  that  the  formality  referred 
to  in  Art.  10  of  this  law  shall  have  been  fulfilled. 

Unless  the  transfer  is  recorded  in  the  Register,  the  suc- 
cessor can  not  make  valid  the  absolute  ownership  to  which 
Art.  4  refers. 


412  GUATEMALA 

ART.  8.  The  assignment  or  sale  of  the  establishment  shall 
include  that  of  the  mark,  save  stipulation  to  the  contrary,  and 
the  assignee  shall  have  the  right  to  use  the  mark  that  desig- 
nates it,  even  though  it  be  a  name,  in  the  same  manner  as  the 
assignor  had,  without  other  restrictions  than  those  expressly 
imposed  in  the  deed  of  sale  or  assignment. 

ART.  9.  The  deed  of  assignment  of  a  mark  must  be 
recorded  in  the  office  in  which  it  is  registered,  in  order  to 
acquire  the  rights  that  this  law  confers  for  registered  marks. 

ART.  10.  There  shall  only  be  considered  as  a  registered 
mark,  for  the  effects  of  the  ownership  that  this  law  accords, 
that  for  which  the  Office  shall  have  made  the  corresponding 
registration. 

ART.  11.  The  protection  of  the  rights  of  the  manufac- 
turer, tradesman,  or  industrial,  with  regard  to  the  exclusive  use 
of  the  mark,  shall  last  only  for  ten  years,  which  may  be  extended 
for  other  equal  periods  by  again  complying  with  the  formalities 
established  and  paying  in  each  case  the  fee  fixed  by  Art.  22. 

ART.  12.  Individuals  may  adopt  for  the  products  of  their 
factories  or  industries  permitted  by  law  the  marks  and  proper 
names  and  distinctives  that  they  may  deem  proper,  except  the 
following : 

1)  The  coat-of-arms  of  the  Republic,  or  of  any  other  coun- 
try, except  when  there  be  presented  authorization  of  the  respec- 
tive Government; 

2)  The  portrait  of  any  person  other  than  the  manufacturer, 
tradesman,  or  industrial,  without  his  previous  consent ;  and 

3)  Distinctives  that  admit  of  confusion  with  other  regis- 
tered marks. 

ART.  13.  Any  person  that  desires  to  obtain  the  ownership 
of  a  mark  of  manufacture,  of  commerce,  or  industry,  must 
apply  for  it  before  the  Secretariat  of  State  in  the  Bureau  of 
Fomento  (Public  Industry). 

ART.  14.  The  application  for  obtaining  a  mark  shall  be 
drawn  up  on  stamped  paper  of  the  corresponding  class  and 
must  be  accompanied: 

1)  By  two  facsimiles  of  the  mark  or  of  the  distinctive  sign 
of  which  it  is  desired  to  make  use ; 

2)  By  a  description,  in  duplicate,  of  the  mark  or  sign,  if 
it  is  a  matter  of  figures  or  emblems,  it  being  necessary  to  indi- 
cate the  class  of  objects  for  which  it  is  intended,  and  whether 
it  is  to  be  applied  to  the  products  of  a  factory,  or  to  objects 
of  commerce; 

3)  By  a  receipt  in  which  there  is  evidenced  the  payment  in 
the  National  Treasury  of  the  fee  stipulated  in  Art.  22,  which 


GUATEMALA  413 

shall  be  returned  in  case  the  registration  of  the  mark  is  refused ; 
and 

4)  By  a  formal  power  of  attorney,  in  case  the  interested 
party  does  not  appear  personally. 

ART.  15.  If  the  mark  should  contain  any  countersign,  and 
the  interested  parties  should  desire  to  keep  it  secret,  they  shall 
make  a  statement  or  description  of  said  countersign  on  a  sheet 
of  paper  which  they  shall  inclose  in  a  sealed  envelope  that  only 
the  respective  Judge  may  open  in  case  of  litigation  or  criminal 
accusation.  Said  sheet  of  paper  shall  remain  deposited  in  the 
Trade  Mark  Office. 

ART.  16.  At  the  foot  of  each  application  a  statement  shall 
be  made  of  the  day  and  hour  on  which  it  is  presented,  this 
statement  to  be  signed  and  sealed  by  the  sub-secretary  of  the 
Bureau;  and  the  applicant  shall  have  the  right  to  ask  for  a 
receipt  of  the  application,  with  annotation  of  the  hour  at  which 
he  filed  it. 

ART.  17.  The  right  of  priority  as  regards  the  ownership 
of  a  mark  shall  be  decided  in  accordance  with  the  day  and  hour 
at  which  the  application  was  filed  at  the  Office,  and  if  there  is 
a  coincidence  in  the  hour,  attention  shall  then  be  paid,  for  this 
purpose,  to  the  date  of  the  application  (memorial). 

ART.  18.  The  application  for  the  ownership  of  a  mark 
shall  be  published  for  one  month  in  the  Periodico  Oficial,  and 
shall  then  be  referred  for  consideration  and  report  to  the  Trade 
Mark  Office.  If  no  opposition  is  made,  and  the  report  is  not 
unfavorable,  government  decree  shall  be  issued  ordering  the 
registration  of  the  mark.  To  such  end,  the  original  record  and 
the  facsimile  shall  then  be  sent  to  the  Trade  Mark  Office,  in 
order  that  the  registration  be  made  in  proper  form,  that  a 
notice  of  the  procedure,  the  number,  folio,  and  book  of  the 
Register  be  written  at  the  foot  of  the  original  record,  and  that 
all  the  papers  of  the  case  be  preserved  in  the  archives.  The 
certificate  of  the  inscription,  accompanied  by  one  of  the  copies 
of  the  registered  mark,  shall  serve  the  owner  as  evidence  of 
his  ownership  of  the  respective  mark. 

ART.  19.  In  case  of  opposition,  or  of  a  report  unfavorable 
to  the  application,  the  Government  Attorney  shall  be  heard, 
and  then  the  proper  decision  shall  be  given,  unless  there  be 
new  formalities  to  fulfill. 

ART.  20.  All  disputes  between  private  parties  regarding 
the  right  to  the  use  of  a  mark,  or  the  counterfeiting  or  imitating 
the  same,  shall  fall  under  the  jurisdiction  of  the  courts. 

ART.  21.  The  Directorate-General  of  Statistics  shall  have 
also  in  its  charge  the  Bureau  of  Registration  of  Marks.  With 


414  GUATEMALA 

such  object  it  shall  be  its  duty  to  keep  for  this  purpose  all  the 
necessary  books  conveniently  arranged,  numbered,  and  paged. 
The  books  of  registration  shall  be  arranged  in  three  columns — 
one  to  paste  or  delineate  the  mark,  another  for  the  inscriptions, 
and  the  third  for  the  cancellations.  The  registry  of  each  mark 
shall  be  made  by  numerical  and  chronological  order.  An  index- 
book,  by  alphabetical  order,  of  surnames,  shall  also  be  kept,  with 
the  industry  to  which  the  mark  corresponds,  the  book,  page,  and 
number  of  the  item.  A  report  shall  be  published  every  year 
of  all  the  marks  registered  during  it,  with  description  of  each 
mark. 

ABT.  22.  For  the  registration  and  certificate  of  a  mark, 
whatever  be  its  origin,  a  fee  of  thirty  pesos  shall  be  paid. 

For  the  registration  and  certificate  of  transfer  the  fee  shall 
be  fifteen  pesos. 

For  each  copy  of  the  certificate  five  pesos  shall  be  paid, 
in  addition  to  the  value  of  the  stamped  paper  on  which  it  is 
drawn  up. 

These  fees  shall  be  paid  into  the  National  Treasury. 

ART.  23.  The  marks,  as  well  as  their  descriptions,  except 
the  secret  countersigns,  shall  be  kept  in  the  Office  at  the  dis- 
posal of  any  one  that  shall  desire  to  examine  them. 

ART.  24.  Factories  situated  in  countries  with  which  the 
Republic  has  entered  into  treaties  in  regard  to  this  subject,  may 
have  their  marks  registered,  by  applying  for  it  directly  or  by 
means  of  an  attorney,  and  giving  proof  of  the  registration  of 
the  mark  in  the  original  country;  but  all  the  papers  must  be 
translated  into  Spanish  and  authenticated. 

ART.  25.  He  who  has  inscribed  his  mark  shall  retain  the 
ownership  thereof  as  long  as  the  courts  do  not  order  the  regis- 
tration to  be  canceled.  Accordingly,  it  may  be  assigned  or 
allowed  to  be  used  by  others ;  but  the  fact  should  be  announced 
in  the  Periodico  Oficial,  and  the  deed  of  transfer  or  concession 
shall  be  recorded  at  the  Trade  Mark  Office. 

Those  that  hitherto  have  failed  to  comply  with  these 
requirements  shall  take  care  to  fulfill  them  to  legalize  their 
rights. 

ART.  26.  The  name  of  a  merchant  or  firm,  and  the  sign 
or  designation  of  a  house  that  deals  in  determined  articles,  shall 
constitute  an  industrial  property  for  the  purposes  of  this  law. 

ART.  27.  If  a  merchant  desires  to  carry  on  an  industry 
in  which  another  person  is  already  engaged  with  the  same  name 
or  with  the  same  conventional  designation,  he  must  change  his 
own  so  as  to  make  it  visibly  distinct  from  that  used  by  the  pre- 
existing house. 


GUATEMALA  415 

ART.  28.  Joint-stock  companies  shall  have  the  right  to 
use  the  name  that  they  bear,  the  same  as  any  private  indi- 
viduals, and  are  subject  to  the  same  regulations. 

ART.  29.  The  right  to  the  exclusive  use  of  a  name  as  indus- 
trial property  shall  terminate  with  the  commercial  house  that 
bears  it,  or  with  the  exploitation  of  the  branch  of  industry. 

ART.  30.  The  registration  of  a  name  is  not  necessary  for 
securing  the  exercise  of  the  rights  granted  by  this  law,  except 
in  case  that  it  forms  a  part  of  the  mark. 

ART.  31.  The  registration  of  marks  is  granted  without 
responsibility  as  to  the  Government.  Those  considering  them- 
selves injured  by  third  parties  shall  have  recourse  to  the  courts 
and  seek  redress  through  such  civil  or  criminal  action  as  may 
be  proper. 

ART.  32.  Third  parties  may  apply  for  the  nullification  of 
a  mark: 

1)  When  the  registered  owner  has  not  within  the  term 
fixed  by  Art.  11  continued  to  exploit  the  industry  to  which  the 
mark  belongs; 

2)  "When  there  are  circumstances  that  lead  to  the  belief 
that  the  tenor  of  the  mark  does  not  correspond  to  its  real 
products,  the  risk  of  misrepresentation  being  thus  imminent. 
(Paragraph  3,  Art.  34.) ; 

3)  The  petition  for  the  nullification  of  a  mark  shall  be 
made  on  petition  to  the  courts  against  the  registered  owner, 
or  against  his  heirs,  in  case  he  shall  have  died. 

ART.  33.  If  before  or  after  the  commencement  of  the  suit, 
the  mark  is  transferred  to  another  person,  the  case  shall  con- 
tinue to  the  end  against  those  who  have  succeeded  to  the  right. 

ART.  34.  The  following  shall  be  punished  as  provided  in 
Paragraph  II,  Title  III,  Book  II  of  the  Penal  Code: 

1)  Those  who  counterfeit  or  imitate  in  any  way  a  mark 
of  manufacture,  of  commerce,  or  of  industry; 

2)  Those  who  place  on  their  products  or  the  articles  belong- 
ing to  their  business  a  mark  belonging  to  another  person; 

3)  Those  who  knowingly  sell,  place  on  sale,  offer  for  sale, 
or  circulate,  articles  with  counterfeit  marks  or  with  marks 
fraudulently  applied; 

4)  Those  who  knowingly  sell,  place  on  sale,  or  offer  for 
sale,  counterfeit  marks,  and  those  who  sell  authentic  marks 
without  knowledge  of  their  proprietor; 

5)  All  those  who  with  fraudulent  intention  place,  or  cause 
others  to  place,  on  an  article  of  merchandise  a  false  announce- 
ment or  any  other  designation  relating  to  the  registration  of 
the  mark,  or  to  the  nature,  quality,  quantity,  number,  weight 


416  GUATEMALA 

or  measure,  or  the  place  or  country  in  which  it  has  been  made 
or  distributed;  and 

6)  Those  who  knowingly  sell,  place  on  sale,  or  offer  for 
sale  merchandise  with  any  of  the  false  announcements  men- 
tioned in  the  preceding  item. 

ART.  35.  In  order  that  there  be  criminality,  it  is  not  neces- 
sary that  the  falsification  embrace  all  of  the  objects  that  were 
to  be  marked,  there  sufficing  the  affixing  to  a  single  article. 

ART.  36.  Those  who  sell  or  place  on  sale  merchandise  with 
usurped  or  counterfeited  marks  in  ignorance  of  the  circum- 
stance, shall  be  bound  to  give  to  the  merchant  or  manufacturer, 
owner  thereof,  when  he  may  ask  for  it,  a  complete  account  in 
writing  of  the  name  and  address  of  the  party  that  shall  have 
sold  or  obtained  the  merchandise,  as  well  as  the  time  when  the 
sale  began,  and  in  case  of  resistance  they  may  be  compelled 
judicially  under  penalty  of  being  considered  accomplices  of  the 
offending  party. 

ART.  37.  Articles  of  merchandise  bearing  counterfeit 
marks  which  may  be  found  in  the  possession  of  the  counter- 
feiter or  his  agents  shall  be  confiscated  and  sold,  and  the  pro- 
ceeds thereof,  after  paying  the  costs  and  indemnities  established 
by  this  law,  shall  be  turned  over  to  the  Treasury  of  the  Houses 
of  Charity  of  the  locality. 

ART.  38.  Counterfeit  marks  found  in  the  possession  of  the 
counterfeiter,  or  his  agents,  shall  be  destroyed  together  with 
the  instruments  used  to  make  them. 

ART.  39.  In  order  that  the  Trade  Mark  Office  shall  be  duly 
organized,  industrials,  merchants  or  manufacturers  who  are 
now  in  possession  of  a  mark  registered  in  the  Republic  shall 
present  themselves  within  three  months  at  the  said  Office  for 
the  express  purpose  of  securing  anew  the  registration  of  their 
mark. 

ART.  40.  If  before  the  promulgation  of  this  law  various 
industrials,  merchants  or  manufacturers  have  been  making  use 
of  the  same  mark,  the  right  to  the  exclusive  use  of  the  same 
shall  belong  to  the  one  who  proves  to  have  made  legitimate  use 
of  it  prior  to  all  others. 

If  none  of  those  interested  can  show  priority  in  the  use  of 
the  mark,  priority  thereof  shall  be  granted  to  the  one  who 
has  the  greatest  elements  of  production. 

ART.  41.  When  the  registration  of  the  mark  has  not  been 
made  within  the  time  fixed  by  Art.  39,  no  one  shall  be  permitted 
to  avail  himself  of  the  use  thereof  before  the  sanction  of  the 
present  law  as  a  ground  for  his  claim  to  the  right  of  priority. 

AST.  42.    In  order  that  foreign  marks  may  enjoy  the  guar- 


GUATEMALA  417 

anties  established  by  this  law,  they  must  be  registered  in  ac- 
cordance with  the  treaties  made  for  that  purpose. 

The  proprietors  of  said  marks,  or  their  agents  duly  author- 
ized, are  the  only  persons  who  may  request  the  registration  of 
the  same. 

ART.  43.  The  Directorate-General  of  the  Statistics  shall 
be  charged  with  the  organization  of  the  Trade  Mark  Bureau  in 
accordance  with  the  present  law  and  the  regulations  that  the 
Secretariat  of  the  Bureau  shall  promulgate. 


HAITI 

LAW  OF  JUNE  13,  1919 

ARTICLE  1.  Any  manufacturer,  merchant  or  trader  has 
the  right  of  distinguishing  his  merchandise  or  products  by 
means  of  special  marks  of  manufacture. 

ART.  2.  Marks  of  manufacture  and  of  commerce  may  be 
of  any  design  not  prohibited  by  the  present  law  and  serving  to 
distinguish  certain  articles  from  other  identical  and  similar 
articles,  but  of  different  origin.  The  following  are  considered 
as  trade  marks:  names  under  a  distinctive  form,  emblems, 
imprints,  stamps,  seals,  reliefs,  letters,  figures,  in  general  any 
mark  serving  to  distinguish  the  products  of  manufacture,  or 
the  objects  of  commerce. 

Trade  marks  may  be  employed  on  the  articles  themselves, 
or  on  their  wrappings. 

ART.  3.  The  following  designs  are  prohibited:  coats  of 
arms,  medals  or  official  insignia,  national  or  foreign,  as  well 
as  all  denominations  or  figures  offensive  to  morals  or  to  public 
decency. 

ART.  4.  In  order  to  guarantee  the  exclusive  right  of  pos- 
session and  use  of  trade  marks,  it  is  indispensable  that  they 
be  registered,  deposited  and  published,  in  conformity  with  the 
prescriptions  of  the  present  law. 

ART.  5.  In  order  to  obtain  the  registration  of  a  trade 
mark,  the  person  interested,  or  his  representative,  must  address 
his  application  to  the  Chamber  of  Commerce  of  Port-au-Prince. 
This  application  should  be  made  in  duplicate  originals  upon 
stamped  paper  of  the  denomination  of  seventy  centimes.  It 
should  contain  the  facsimile  of  the  trade  mark,  a  detailed 
description  of  that  which  constitutes  the  mark,  a  declaration 
of  the  kind  of  industry  or  of  business  to  the  use  of  which  the 
mark  is  assigned,  the  calling  of  the  petitioner  and  the  location 
of  his  manufacturing  establishment.  Of  these  two  originals, 
comprising  the  application  for  registration,  one  will  be  sent  to 
the  Department  of  Commerce,  the  other  will  remain  in  the 
Chamber  of  Commerce. 

A  proces-verbal  of  deposit  will  be  drawn  up  by  the  Chamber 
of  Commerce,  which  will  enter  it  on  a  special  Register,  num- 
bered and  initialed  by  the  Dean  of  the  Tribunal  of  the  First 
Instance.  A  copy  of  this  will  be  delivered  to  the  petitioner.  An 
extract  will  be  sent  to  the  Department  of  Commerce  in  order 


HAITI  419 

to  be  inserted  in  the  Moniteur  Officiel. 

ART.  6.  There  will  be  payable  a  tax  of  registration  of 
thirty  gourdes  for  the  marks  of  the  country,  and  seventy-five 
gourdes  for  foreign  marks.  Half  of  this  tax  will  accrue  to  the 
Public  Treasury  and  the  other  half  to  the  Chamber  of  Commerce. 

ART.  7.  The  registration  of  marks  will  be  valid  for  all  the 
products  and  merchandise  of  the  country  during  a  period  of 
20  years,  at  the  expiration  of  which  it  may  be  renewed  for  the 
same  period,  in  accordance  with  the  same  formalities  prescribed 
by  the  present  law.  For  foreign  marks  the  duration  of  the 
registration  will  be  fixed  in  accordance  with  the  laws  of  the 
countries  where  they  are  exploited,  which  cannot  exceed  that 
fixed  by  the  present  law. 

ART.  8.  Marks  are  assignable;  their  assignment  will  be 
mentioned  on  the  margin  of  the  proces-verbal  of  deposit  pro- 
vided in  Art.  5. 

ART.  9.  The  following  will  be  condemned  to  a  fine  of  500 
gourdes  to  the  profit  of  the  Public  Treasury: 

1)  He  who  shall  make  use,  without  authorization,  of  a 
mark  of  which  he  is  not  the  proprietor; 

2)  He  who  has  reproduced  in  whole  or  in  part,  in  any 
manner  whatever  in  a  fashion  to  deceive  the  consumer,  a  trade 
mark  that  has  been  registered  and  published; 

3)  He  who  has  employed  such  an  imitation  or  counterfeit 
mark. 

ART.  10.  The  following  will  be  condemned  to  a  fine  of 
250  gourdes  to  the  profit  of  the  Public  Treasury : 

1)  He  who  has  employed  on  a  trade  mark  the  coat  of  arms, 
the  insignia  of  a  public  or  official  character,  national  or  foreign ; 

2)  He  who  has  employed  trade  marks  offensive  to  morals 
or  public  decency. 

ART.  11.  The  proprietor  of  the  mark  falsified  or  falsely 
reproduced  has  the  right  of  depositing  a  complaint  against  those 
whom  he  finds  in  one  of  the  cases  foreseen  in  Arts.  9  and  10. 
The  prosecution  may  be  exercised  officially  by  the  Public  Min- 
ister before  the  Tribunal  of  the  First  Instance  in  the  jurisdic- 
tion of  which  the  products  have  been  found,  without  prejudice 
to  damages  that  may  be  due  to  the  proprietor  of  the  mark. 

ART.  12.  The  fraud  once  proven,  the  products  that  bear 
the  false  or  counterfeit  mark  will  be  seized  and  sold  at  public 
auction,  either  pending  decision,  if  they  are  susceptible  of  being 
damaged  or  deteriorated,  or  in  execution  of  judgment.  They 
constitute  the  guarantee  of  payment  of  the  fine  and  the  indem- 
nity due  to  the  party  injured. 

ART.  13.    The  seizure  will  be  made  on  petition  of  the  party 


420  HAITI 

interested  and  in  the  case  of  Art.  10  on  demand  of  the  Commis- 
sioner of  the  Government  of  the  Jurisdiction  where  the  mer- 
chandise or  products  have  been  found.  The  competent  Tribunal 
is  that  of  the  domicile  of  the  complainant  or  of  the  place  where 
the  merchandise  or  products  have  been  found. 


HAWAII 

REVISED  STATUTES  OF  HAWAII,  CHAPTER  191,  1915 

CERTIFICATE  MAY  BE  OBTAINED 

SECTION  3428.  Any  person  or  firm,  or  any  corporation, 
desiring  to  secure  the  exclusive  use  of  any  print,  label  or  trade 
mark  intended  to  be  attached  or  applied  to  any  goods  or  manu- 
factured articles,  or  to  bottles,  boxes  or  packages  containing 
such  goods  or  manufactured  articles,  to  indicate  the  name  of 
the  manufacturer,  the  contents  of  the  packages,  the  quality  of 
the  goods,  or  directions  for  use,  may  obtain  a  certificate  of 
registration  of  such  print,  label  or  trade  mark  in  the  manner 
hereinafter  provided. 

APPLICATION  FOB  CERTIFICATE 

SEC.  3429.  Before  any  one  shall  receive  a  certificate  of 
registration  of  a  print,  label,  or  trade  mark,  he  shall  file  in  the 
office  of  the  treasurer,  an  application  for  the  registration  of 
such  print,  label  or  trade  mark,  with  a  declaration  verified  by 
the  oath  of  the  applicant;  or,  if  the  application  be  made  by  a 
firm  or  corporation,  by  the  oath  of  a  member  of  such  firm,  or 
an  officer  of  such  corporation,  that  he  is,  or  they  are,  the  sole 
and  original  proprietor  or  proprietors,  or  the  assign  or  assigns 
of  such  proprietor  or  proprietors  of  the  goods  or  manufactured 
articles  for  which  said  print,  label  or  trade  mark  is  to  be  used, 
and  describing  such  goods  and  manufactured  articles,  and  the 
manner  in  which  such  print,  label  or  trade  mark  is  to  be  used. 
Said  application  shall  be  accompanied  by  two  exact  copies  of 
such  print,  label  or  trade  mark. 

FEE 

SEC.  3430.  Upon  filing  such  application,  the  applicant  or 
applicants  shall  pay  to  the  treasurer  a  fee  of  $5.00. 

RECORD 

Issuance  and  Effect  of  Certificate 

SEC.  3431.  Upon  receiving  such  application  so  accom- 
panied, and  the  payment  of  such  fee,  the  treasurer  shall  cause 
the  said  print,  label  or  trade  mark  to  be  recorded  in  a  book 
to  be  kept  for  that  purpose,  and  shall  issue  to  the  applicant  or 
applicants  a  certificate  of  registration  under  the  seal  of  the 
treasury;  and  such  certificate  of  registration  shall  secure  to 
the  applicant  or  applicants  the  exclusive  use  of  the  said  print, 
label  or  trade  mark  throughout  the  Territory  of  Hawaii  for 
the  term  of  twenty  years  from  the  date  thereof. 


HONDURAS 

DECREE  NO.  87  OF  MARCH  22,  1919 

ARTICLE  1.  Any  sign,  emblem,  or  special  name  that  mer- 
chants or  manufacturers  adopt  on  their  articles  or  products 
for  distinguishing  them  from  those  of  other  manufacturers  or 
merchants  that  manufacture  or  trade  in  articles  of  the  same 
species  shall  be  considered  a  mark  of  commerce  or  of  manu- 
facture. 

ART.  2.  Marks  may  be  placed  upon  the  containers  or  wrap- 
pers or  upon  the  objects  themselves  that  it  is  desired  to  dis- 
tinguish. 

ART.  3.  The  color  or  form  of  articles  shall  not  be  con- 
sidered as  marks. 

ART.  4.  There  shall  not  be  registered  as  marks  in  Hon- 
duras : 

a)  Those  identical  or  similar  to  others  already  registered 
in  favor  of  others,  or  which  have  distinctive  characters  of  such 
nature  that  they  may  cause  confusion  at  first  sight ; 

b)  The  escutcheons,  emblems,  or  seals  that  are  used  by 
the   Government,   municipalities,   or   any   public   corporation, 
whether  national  or  foreign; 

c)  Simple  names,  generic  or  geographic,  or  of  persons  or 
objects  if  not  accompanied  by  designs  or  phrases  that  singu- 
larize  them; 

d)  The  names  or  portraits  of  living  persons,  without  their 
consent ; 

e)  Any  sign  or  word  that  is  contrary  to  morals  or  ridicules 
a  corporation  or  person,  in  the  opinion  of  the  Commissioner  of 
the  Office  of  Patents  and  Marks,  or  of  the  Secretary  of  Fomento. 

ART.  5.  In  order  to  obtain  the  exclusive  right  to  the  use 
of  a  mark  of  manufacture  or  of  commerce,  it  is  necessary  to 
cause  it  to  be  registered  in  the  Office  of  Patents  and  Marks 
under  the  conditions  that  this  law  establishes. 

ART.  6.  Any  Honduran  or  foreigner  who  desires  to  regis- 
ter a  mark  of  manufacture  or  of  commerce  in  Honduras  must 
present  an  application,  on  corresponding  stamped  paper,  that 
expresses  the  name,  domicile,  and  profession  of  the  applicant, 
name  and  location  of  his  factory  and  his  place  of  business ;  com- 
plete and  detailed  description  of  the  mark  with  the  reservations 
that  are  made  with  respect  to  it ;  if  it  has  been  registered  before 
in  other  countries,  in  what  office,  under  what  number  and  on 


HONDURAS  423 

what  date ;  the  character  of  the  mark  and  the  name  of  the  prod- 
ucts to  which  it  is  applied  and  in  what  form. 

"With  said  application  there  shall  be  presented: 

a)  The  authorization  to  apply  if  the  interested  party  does 
not  present  it  himself ; 

b)  The  contract  of  agency; 

c)  A  block  or  electrotype  that  represents  the  mark; 

d)  Ten  specimens  of  the  mark. 

ART.  7.  When  the  applicant  is  a  foreign  person  or  cor- 
poration, the  authorization  to  apply  mentioned  in  section  (a) 
of  the  foregoing  article  must  be  accompanied  by  a  certificate  of 
the  mark,  if  it  has  been  registered  before  in  a  foreign  country. 
Both  documents  must  be  legalized  in  the  country  of  origin  and 
authenticated  by  the  Consul  of  Honduras  resident  in  the  same. 

ART.  8.  Those  only  may  exercise  representation  who  are 
qualified  in  the  judicial  branch.  Neither  may  the  employees  of 
the  Executive  Power  exercise  it. 

ART.  9.  The  registration  of  the  mark  is  made  under  the 
exclusive  responsibility  of  the  applicant  and  without  prejudice 
to  third  parties. 

ART.  10.  If  the  Office  of  Patents  and  Marks,  after  examina- 
tion, shall  see  that  the  application  and  the  documents  to  which 
Art.  6  refers  are  found  in  conformity  with  the  provisions  of 
this  law,  it  shall  order  the  said  application  to  be  published  in 
the  official  periodical,  La  Gaceta,  with  a  reproduction  of  the 
cliche  of  the  mark,  during  three  consecutive  months,  with  inter- 
vals of  thirty  days.  In  the  contrary  case,  it  shall  make  it  known 
to  the  interested  party  within  the  second  day  following  its  pre- 
sentation. If  within  thirty  days  after  the  last  publication  has 
been  made  no  opposition  has  been  presented,  the  Fiscal  General 
of  the  Treasury  shall  be  heard ;  and  this  requisite  being  accom- 
plished, the  deposit  and  registration  of  the  mark  shall  be  made 
by  delivering  certification  to  the  party  interested. 

ART.  11.  If  opposition  be  presented,  the  documents  shall 
be  passed  to  the  First  Judge  of  Civil  Law  of  the  department  of 
Tegucigalpa,  in  order  that,  in  conformity  with  the  procedure 
of  ordinary  law,  the  rights  of  the  contending  parties  may  be 
ventilated.  The  decision  of  the  judge  being  given,  the  said 
documents  will  be  returned  to  the  Office  of  Patents  and  Marks 
in  order  that  note  may  be  taken  in  favor  of  whom  the  disputed 
mark  ought  to  be  registered. 

ART.  12.  The  certification  spoken  of  in  Art.  10  shall  con- 
sist of  a  copy  of  the  grant  of  registration  and  deposit  of  the 
mark.  The  said  certification  shall  be  attested  with  the  signa- 
tures of  the  Chief  of  the  Office  and  of  the  Secretary,  with  the 


424  HONDURAS 

Seal  of  the  same,  and  shall  constitute  the  title  that  accredits  to 
the  interested  party  the  right  to  the  exclusive  use  of  the  mark. 

ART.  13.  Questions  that  arise  as  regards  priority  of  de- 
posit or  adoption  of  a  mark  of  commerce  or  of  manufacture 
shall  be  determined  by  taking  into  account  the  date  of  deposit 
in  the  country  in  which  has  been  made  the  first  application. 

ART.  14.  The  registration  of  the  mark  shall  occasion  in 
favor  of  the  Exchequer  an  impost  of  fifty  pesos  silver,  for  a 
single  time,  and  shall  be  effected  in  the  National  Treasury  be- 
fore the  issuance  of  the  said  certification. 

ART.  15.  The  registration  of  a  mark  shall  remain  valid 
during  ten  years.  At  the  end  of  this  term  registration  may  be 
renewed  on  application  of  the  interested  party,  without  which 
there  can  be  no  penal  action  against  those  who  unduly  use  or 
falsify  the  mark;  this  renewal  will  occasion  the  same  fees  as 
the  registration. 

ART.  16.  The  registration  of  a  mark  shall  commence  to 
produce  its  effects  from  the  date  of  the  issuance  of  the  cor- 
responding grant. 

ART.  17.  Marks  of  manufacture  and  of  commerce  may  be 
transferred  or  alienated  the  same  as  any  other  right.  This 
transfer  shall  occasion  the  same  impost  as  that  of  its  registra- 
tion ;  and,  in  the  corresponding  file,  as  an  indispensable  requisite, 
shall  be  noted  the  name  of  the  acquirer,  with  the  addition  of 
all  such  documents  as  may  be  presented  for  the  case. 

The  transfer  must  be  registered  in  the  Office  of  Patents 
and  Marks,  and,  without  this  requisite,  it  shall  produce  no  effect 
against  a  third  party. 

ART.  18.  Marks  may  be  transferred  only  with  the  estab- 
lishment in  which  are  produced  or  sold  the  articles  protected  by 
them. 

The  sale  or  transfer  effected,  the  interested  or  his  repre- 
sentative shall  present  a  certified  copy  of  the  document  of  the 
transfer.  If  the  sale  has  been  effected  abroad,  said  document 
must  be  authenticated  by  the  Consul  of  Honduras  resident  in 
the  country  in  which  the  sale  or  transfer  was  made.  The  Office 
of  Patents  and  Marks  shall  include  that  document  with  the  cor- 
responding file  and  inscribe  on  the  margin  of  the  Book  of  Regis- 
tration an  extract  from  the  deed  of  assignment.  It  shall  give 
certification  to  the  interested  party  for  corresponding  effects. 

ART.  19.  The  registration  of  a  mark  will  be  null  when  it 
has  been  made  in  contravention  of  the  provisions  of  this  law, 
or  when  the  mark  has  been  earlier  registered  by  another,  if  this 
registration  has  existed  more  than  two  years  or  if,  having 
existed  less  than  two  years,  it  was  effected  with  better  right. 


HONDURAS  425 

ART.  20.  The  right  of  ownership  of  a  mark  will  be  ex- 
tinguished : 

a)  On  application  of  the  interested  party; 

b)  When  the  term  of  ten  years  has  run  and  renewal  has 
not  been  effected; 

c)  When  a  question  as  to  the  validity  of  a  mark  having 
been  raised,  the  decision  shall  declare  that  it  cannot  be  con- 
ceded, whether  because  it  belongs  to  another  person  or  for  any 
other  circumstance  of  those  enumerated  in  this  law. 

ART.  21.  Whoever  is  occasioned  prejudice  by  the  registra- 
tion of  a  mark  may  petition  for  its  nullity.  The  Fiscal  General 
of  the  Treasury  may  also  do  so  in  the  cases  in  which  a  general 
interest  exists. 

ART.  22.  The  executory  decision  that  declares  the  nullity 
of  registration  of  the  mark  will  be  communicated  to  the  Office 
of  Patents  by  the  Judge  that  has  cognizance  of  the  matter  and 
will  be  published  in  the  official  periodical,  La  Gaceta. 

ART.  23.  Every  registration  will  be  effected  under  the  ex- 
clusive responsibility  of  the  applicant.  The  Government  only 
undertakes  to  give  protection  to  him  who  has  registered  a  mark 
without  obstacles,  or  to  him  who  has  given  proofs  of  having  the 
better  right. 

ART.  24.  Marks  deposited  in  conformity  with  this  law 
shall  be  preserved  in  perpetuity  in  the  Patent  Office,  and  their 
registration  may  be  examined  by  any  person  that  so  requests. 
Also,  certified  copies  can  be  obtained  on  payment  of  twenty-five 
pesos  into  the  National  Treasury,  duly  presenting  the  receipt 
on  applying  for  the  certification. 

ART.  25.  A  mark  will  be  considered  abandoned  if  more 
than  one  year  elapses  without  the  production  of  the  article  for 
which  it  is  destined  or  if  it  is  not  used  during  this  term  in  the 
Republic;  but  it  may  be  rehabilitated  upon  payment  of  a  new 
impost. 

ART.  26.  It  will  be  considered  falsification  when  marks  are 
used  that  are  imitations  of  others  already  registered  in  Hon- 
duras or  when  there  have  been  suppressed,  altered,  or  changed, 
letters,  numbers,  forms,  colors,  or  signs  in  such  a  manner  as 
may  cause  confusion  at  first  sight,  and  which  pertain  to  a  mark 
already  registered. 

ART.  27.  They  shall  be  considered  guilty  of  the  crime  of 
falsification  in  conformity  with  the  provisions  of  the  Penal  Code, 
whatever  may  be  the  place  in  which  this  shall  have  been  com- 
mitted : 

a)  Who  have  falsified  a  mark; 


426  HONDURAS 

b)  Who  make  use  of  a  mark  belonging  to  another  or  imi- 
tated ; 

c)  Who  import,  sell,  aid  or  assist  in  circulating  articles 
with  marks  falsified  or  fraudulently  applied; 

d)  Those  who  refill  with  spurious  products  receptacles  pro- 
tected with  imitation  marks ; 

e)  Those  who  place  or  cause  to  be  placed  on  an  article 
legends,  or  any  other  designations,  false  with  respect  to  the 
nature,  quality,  quantity,  proprietorship,  number,  weight,  or 
measure  of  an  industrial  or  mercantile  product,  or  the  place  or 
country  in  which  it  was  manufactured  or  distributed ; 

f )  Those  who  sell  articles  with  marks  that  bear  the  legend 
of  being  registered,  without  being  so  in  Honduras. 

ART.  28.  The  prosecution  of  falsifiers,  importers  or  sellers 
of  articles  with  marks  falsified  or  imitated  and  other  crimes  that 
have  been  committed  in  contravention  of  this  law  shall  be  dis- 
posed of  according  to  the  Second  Part,  Sole  Book,  of  the  Code 
of  Procedure  in  force. 

ART.  29.  When  there  are  International  Conventions  or 
treaties,  the  registration  of  trade  marks  shall  be  verified  in 
conformity  with  the  stipulations  therein. 

ART.  30.  The  Government  shall  establish  an  Office  of 
Patents  and  Marks,  subordinate  to  the  Secretariat  of  Fomento ; 
in  the  meantime,  the  said  Secretariat  shall  have  the  said  Section 
in  charge. 

ART.  31.  Decree  No.  106  of  March  7,  1902,  stands  abro- 
gated. Marks  that  have  been  registered  before  the  publication 
of  this  law  shall  enjoy  the  protection  that  the  present  decree 
grants,  and  those  presented  to  be  registered  before  it  came  into 
force  will  be  subject  to  the  decree  in  force  at  the  time  of  their 
presentation.* 

ART.  32.  The  present  law  will  commence  to  be  of  effect 
the  first  of  August  next. 

*Art  31  is  ambiguous.  Our  correspondent  in  Tegucigalpa  interprets  it  to 
mean  that  marks  registered  prior  to  Aug.  1,  1919  [the  date  when  the  present  law 
became  effective],  for  an  indefinite  period,  will  continue  for  a  term  of  ten  years 
from  that  date,  and  applications  pending  on  the  same  date  will  be  registered  with- 
out payment  of  additional  fee  and  for  a  term  of  ten  years. — Ed. 


HONGKONG 

ORDINANCE  NO.  40  OF  DECEMBER  10,  1909 

SHORT  TITLE 

1.  This   Ordinance  may  be   cited  as  the   Trade  Marks 
Ordinance,  1909. 

DEFINITIONS 

2.  In  and  for  the  purposes  of  this  Ordinance  (unless  the 
context  otherwise  requires) : — 

A  "mark"  shall  include  a  device,  brand,  heading,  label, 
ticket,  name,  signature,  word,  letter,  numeral,  or  any  combina- 
tion thereof: 

A  "trade  mark"  shall  mean  a  mark  used  or  proposed  to  be 
used  upon  or  in  connection  with  goods  for  the  purpose  of  indi- 
cating that  they  are  the  goods  of  the  proprietor  of  such  trade 
mark  by  virtue  of  manufacture,  selection,  certification,  dealing 
with,  or  offering  for  sale : 

A  "registrable  trade  mark"  shall  mean  a  trade  mark  which 
is  capable  of  registration  under  the  provisions  of  this  Ordi- 
nance : 

"The  Registrar"  shall  mean  such  officer  as  the  Governor 
may,  by  order  to  be  published  in  the  Gazette,  from  time  to  time 
appoint  to  be  Registrar  of  Trade  Marks : 

"The  Seal  of  the  Registrar"  shall  mean  the  Seal  of  the 
office  in  which  the  Register  of  Trade  Marks  is  kept : 

"The  Register"  shall  mean  the  register  of  trade  marks 
kept  under  the  provisions  of  this  Ordinance: 

A  "registered  trade  mark"  shall  mean  a  trade  mark  which 
is  actually  upon  the  register: 

"Prescribed"  shall  mean,  in  relation  to  proceedings  before 
the  Court,  prescribed  by  rules  of  court,  and,  in  other  cases,  pre- 
scribed by  this  Ordinance  or  the  Rules  thereunder: 

"The  Court"  shall  mean  the  Supreme  Court  and  includes 
a  Judge  of  the  Supreme  Court  sitting  separately  in  Court  or 
in  Chambers  and  in  Original  or  Summary  Jurisdiction: 

"The  Tribunal"  shall  mean  the  Governor,  the  Court  or 
the  Registrar. 

SEAL 

3.  The  Registrar  shall  use  a  seal  having  a  device  and 
impression  of  the  Royal  Arms  with  a  label  surrounding  the 
same  and  the  inscription  "The  Seal  of  the  Trade  Marks  Office 
Hongkong. ' ' 


428  HONGKONG 

REGISTER  OF  TRADE  MARKS 

4.  There  shall  be  kept  for  the  purposes  of  this  Ordinance, 
at  such  office  as  the  Governor  shall  by  order  to  be  published  in 
the  Gazette  direct,  a  book  called  the  Register  of  Trade  Marks, 
wherein  shall  be  entered  all  registered  trade  marks  with  the 
dates  of  their  registration,  the  names  and  addresses  of  their 
proprietors,  notifications   of  assignments  and  transmissions, 
disclaimers,   conditions,   limitations   and   such   other  matters 
relating  to  such  trade  marks  as  may  from  time  to  time  be  pre- 
scribed.    The  register  shall  be  kept  under  the  control  and 
management  of  the  Registrar. 

TRUST  NOT  TO  BE  ENTERED  ON  REGISTER 

5.  There  shall  not  be  entered  in  the  register  any  notice  of 
any  trust  expressed,  implied,  or  constructive,  nor  shall  any  such 
notice  be  receivable  by  the  Registrar. 

INCORPORATION  OF  EXISTING  REGISTER 

6.  The  register  of  trade  marks  existing  at  the  date  of  the 
commencement  of  this  Ordinance  shall  be  incorporated  with  and 
form  part  of  the  register.    Subject  to  the  provisions  of  sections 
36  and  41  of  this  Ordinance,  the  validity  of  the  original  entry 
of  any  trade  mark  upon  the  register  so  incorporated  shall  be 
determined  in  accordance  with  the  Ordinance  in  force  at  the 
date  of  such  entry,  and  such  trade  mark  shall  retain  its  original 
date,  but  for  all  other  purposes  it  shall  be  deemed  to  be  a  trade 
mark  registered  under  this  Ordinance. 

INSPECTION  OF  AND  EXTRACT  FROM  REGISTER 

7.  The  register  kept  under  this  Ordinance  shall  during 
office  hours  be  open  to  the  inspection  of  the  public,  subject  to 
such  regulations  as  may  be  prescribed;  and  certified  copies, 
sealed  with  the  seal  of  the  Office  of  the  Registrar,  of  any  entry 
in  any  such  register  shall  be  given  to  any  person  requiring  the 
same  on  payment  of  the  prescribed  fee. 

REGISTRABLE  TRADE  MARKS 
Trade  Mark  Must  Be  for  Particular  Goods 

8.  A  trade  mark  must  be  registered  in  respect  of  particu- 
lar goods  or  classes  of  goods. 

9.  A  registrable  trade  mark  must  contain  or  consist  of  at 
least  one  of  the  following  essential  particulars: — 

(1)  The  name  of  a  company,  individual,  or  firm  repre- 
sented in  a  special  or  particular  manner; 

(2)  The  signature  (in  other  than  Chinese  characters)  of 
the   applicant   for   registration   or   some   predecessor   in  his 
business ; 

(3)  An  invented  word  or  invented  words; 


HONGKONG  429 

(4)  A  word  or  words  having  no  direct  reference  to  the 
character  or  quality  of  the  goods,  and  not  being  according  to 
its  ordinary  signification  a  geographical  name  or  a  surname; 

(5)  Any  other  distinctive  mark;  but  a  name,  signature,  or 
word  or  words,  other  than  such  as  fall  within  the  descriptions 
in  the  above  paragraphs  (1),  (2),  (3)  and  (4),  shall  not,  except 
by  order  of  the  Governor  or  the  Court,  be  deemed  a  distinctive 
mark. 

Provided  always  that  any  special  or  distinctive  word  or 
words,  letter,  numeral  or  combination  of  letters  or  numerals 
used  as  a  trade  mark  by  the  applicant  or  his  predecessors  in 
business  before  the  thirteenth  day  of  August  one  thousand  eight 
hundred  and  seventy-five,  which  has  continued  to  be  used 
(either  in  its  original  form  or  with  additions  or  alterations  not 
substantially  affecting  the  identity  of  the  same)  down  to  the 
date  of  the  application  for  registration,  shall  be  registrable  as 
a  trade  mark  under  this  Ordinance,  if  it  is  already  registered 
in  the  United  Kingdom  as  an  old  mark  used  before  the  said  date. 

For  the  purposes  of  this  section  "distinctive"  shall  mean 
adapted  to  distinguish  the  goods  of  the  proprietor  of  the  trade 
mark  from  those  of  other  persons. 

In  determining  whether  a  trade  mark  is  so  adapted,  the 
Tribunal  may,  in  the  case  of  a  trade  mark  in  actual  use,  take 
into  consideration  the  extent  to  which  such  user  has  rendered 
such  trade  mark  in  fact  distinctive  for  the  goods  with  respect 
to  which  it  is  registered  or  proposed  to  be  registered. 
COLOURED  TRADE  MARKS 

10.  A  trade  mark  may  be  limited  in  whole  or  in  part  to 
one  or  more  specified  colours,  and  in  such  case  the  fact  that  it 
is  so  limited  shall  be  taken  into  consideration  by  any  Tribunal 
having  to  decide  on  the  distinctive  character  of  such  trade  mark. 
If  and  so  far  as  a  trade  mark  is  registered  without  limitation  of 
colour  it  shall  be  deemed  to  be  registered  for  all  colours. 

RESTRICTION  ON  REGISTRATION 

11.  It  shall  not  be  lawful  to  register  as  a  trade  mark  or 
part  of  a  trade  mark  any  matter  the  use  of  which  would  by 
reason  of  its  being  calculated  to  deceive  or  otherwise  be  dis- 
entitled to  protection  in  a  Court  of  Justice,  or  would  be  con- 
trary to  law  or  morality,  or  any  scandalous  design. 

REGISTRATION  OF  TRADE  MARKS 
Application  for  Registration 

12.  (1)  Any  person  claiming  to  be  the  proprietor  of  a 
trade  mark  who  is  desirous  of  registering  the  same  must  apply 
in  writing  to  the  Registrar  in  the  prescribed  manner. 


430  HONGKONG 

(2)  In  the  case  of  an  application  for  registration  of  a  trade 
mark  under  section  9  (5),  which  does  not  fall  within  the  descrip- 
tions in  section  9  (1),  (2),  (3)  or  (4),  the  Registrar  shall  refer 
the  application  to  the  Governor  or  to  the  Court,  at  the  option 
of  the  applicant,  for  an  order  thereon. 

(3)  Subject  to  the  provisions  of  this  Ordinance,  the  Regis- 
trar may  refuse  an  application,  or  may  accept  it  absolutely  or 
subject  to  conditions,  amendments,  or  modifications. 

(4)  In  case  of  any  such  refusal  or  conditional  acceptance 
the  Registrar  shall,  if  required  by  the  applicant,  state  in  writ- 
ing and  communicate  to  the  applicant  the  grounds  of  his  deci- 
sion and  the  materials  used  by  him  in  arriving  at  the  same,  and 
such  decision  shall  be  subject  to  appeal  to  the  Governor  or  the 
Court  at  the  option  of  the  applicant.    The  Tribunal  shall,  if 
required,  hear  the  applicant  and  the  Registrar,  and  shall  make 
an  order  determining  whether,  and  subject  to  what  conditions, 
amendments,  or  modifications,  if  any,  the  application  is  to  be 
accepted. 

(5)  Appeals  under  this  section  shall  be  heard  on  the  ma- 
terials so  stated  by  the  Registrar  to  have  been  used  by  him  in 
arriving  at  his  decision,  and  no  further  grounds  of  objection  to 
the  acceptance  of  the  application  shall  be  allowed  to  be  taken 
by  the  Registrar,  other  than  those  stated  by  him,  except  by 
leave  of  the  Tribunal  hearing  the  appeal.    Where  any  further 
grounds  of  objection  are  taken  the  applicant  shall  be  entitled 
to  withdraw  his  application  without  payment  of  costs  on  giving 
notice. 

(6)  The  Registrar  or  the  Governor  or  the  Court,  as  the 
case  may  be,  may  at  any  time,  whether  before  or  after  accept- 
ance, correct  any  error  in  or  in  connection  with  the  application, 
or  may  permit  the  applicant  to  amend  his  application  upon  such 
terms  as  they  may  think  fit. 

ADVERTISEMENT  OF  REGISTRATION 

13.  When  an  application  for  registration  of  a  trade  mark 
has  been  accepted,  whether  absolutely  or  subject  to  conditions, 
the  applicant  shall,  as  soon  as  may  be  after  such  acceptance, 
cause  the  application,  as  accepted,  to  be  advertised  in  the  pre- 
scribed manner.    Such  advertisement  shall  set  forth  all  condi- 
tions subject  to  which  the  application  has  been  accepted. 

OPPOSITION  TO  REGISTRATION 

14.  (1)  Any  person  may,  within  the  prescribed  time  from 
the  date  of  the  advertisement  of  an  application  for  registration 
of  a  trade  mark,  give  notice  to  the  Registrar  of  opposition  to 
such  registration. 


HONGKONG  431 

(2)  Such  notice  shall  be  given  in  writing  in  the  prescribed 
manner  and  shall  include  a  statement  of  the  grounds  of  oppo- 
sition. 

(3)  The  Registrar  shall  send  a  copy  of  such  notice  to  the 
applicant  and,  within  the  prescribed  time  after  the  receipt  of 
such  notice,  the  applicant  shall  send  to  the  Registrar,  in  the 
prescribed  manner,  a  counter- statement  of  the  grounds  on  which 
he  relies  for  his  application,  and  if  he  does  not  do  so  he  shall 
be  deemed  to  have  abandoned  his  application. 

(4)  If  the  applicant  send  such  counter-statement,  the  Regis- 
trar shall  furnish  a  copy  thereof  to  the  persons  giving  notice 
of  opposition,  and  shall,  after  hearing  the  parties,  if  so  re- 
quired, and  considering  the  evidence,  decide  whether,  and  sub- 
ject to  what  conditions,  registration  is  to  be  permitted. 

(5)  The  decision  of  the  Registrar  shall  be  subject  to  ap- 
peal to  the  Court  or,  with  the  consent  of  the  parties,  to  the 
Governor. 

(6)  An  appeal  under  this  section  shall  be  made  in  the  pre- 
scribed manner,  and  on  such  appeal  the  Tribunal  shall,  if  re- 
quired, hear  the  parties  and  the  Registrar,  and  shall  make  an 
order  determining  whether  and  subject  to  what  conditions,  if 
any,  registration  is  to  be  permitted. 

(7)  On  the  hearing  of  any  such  appeal  any  party  may 
either  in  the  manner  prescribed  or  by  special  leave  of  the  Tribu- 
nal bring  forward  further  material  for  the  consideration  of 
the  Tribunal. 

(8)  In  proceedings  under  this  section  no  further  grounds 
of  objection  to  the  registration  of  a  trade  mark  shall  be  allowed 
to  be  taken  by  the  opponent  or  the  Registrar  other  than  those 
stated  by  the  opponent  as  herein-above  provided,  except  by 
leave  of  the  Tribunal  hearing  the  appeal.    Where  any  further 
grounds  of  objection  are  taken,  the  applicant  shall  be  entitled 
to  withdraw  his  application  without  payment  of  the  costs  of 
the  opponent  on  giving  notice  as  prescribed. 

(9)  In  any  appeal  under  this  section,  the  Tribunal  may, 
after  hearing  the  Registrar,  permit  the  trade  mark  proposed  to 
be  registered  to  be  modified  in  any  manner  not  substantially 
affecting  the  identity  of  such  trade  mark,  but  in  such  case  the 
trade  mark  as  so  modified  shall  be  advertised  in  the  prescribed 
manner  before  being  registered. 

(10)  The  Registrar  or,  in  the  case  of  an  appeal  to  the  Gov- 
ernor, the  Governor  shall  have  power  in  proceedings  under  this 
section  to  award  to  any  party  costs  of  such  proceedings  or  any 
part  thereof  and  to  direct  how  and  by  what  parties  and  on  what 
scale  they  are  to  be  paid.    Such  costs  shall  be  taxed  before  the 


432  HONGKONG 

Registrar  of  the  Supreme  Court  and  shall  be  recoverable  in 
the  same  manner  as  costs  in  an  action. 

(11)  If  a  party  giving  notice  of  opposition  or  of  appeal 
neither  resides  nor  carries  on  business  in  the  Colony,  the  Regis- 
trar or  the  Tribunal  may  require  such  party  to  give  security  for 
costs  of  the  proceedings  before  it  relative  to  such  opposition 
or  appeal  and,  in  default  of  such  security  being  duly  given,  may 
treat  the  opposition  or  appeal  as  abandoned. 

DISCLAIMERS 

15.  If  a  trade  mark  contains  parts  not  separately  regis- 
tered by  the  proprietor  as  trade  marks,  or  if  it  contains  matter 
common  to  the  trade  or  otherwise  of  a  non-distinctive  character, 
the  Registrar  or  the  Governor  or  the  Court,  in  deciding  whether 
such  trade  mark  shall  be  entered  or  shall  remain  upon  the  regis- 
ter, may  require,  as  a  condition  of  its  being  upon  the  register, 
that  the  proprietor  shall  disclaim  any  right  to  the  exclusive 
use  of  any  part  or  parts  of  such  trade  mark,  or  of  all  or  any 
portion  of  such  matter,  to  the  exclusive  use  of  which  the  Tribu- 
nal holds  him  not  to  be  entitled,  or  that  he  shall  make  such  other 
disclaimer  as  the  Tribunal  may  consider  needful  for  the  pur- 
pose of  denning  his  rights  under  such  registration;  provided 
always  that  no  disclaimer  upon  the  register  shall  affect  any 
rights  of  the  proprietor  of  a  trade  mark  except  such  as  arise 
out  of  the  registration  of  the  trade  mark  in  respect  of  which 
the  disclaimer  is  made. 

DATE  OF  REGISTRATION 

16.  When  an  application  for  registration  of  a  trade  mark 
has  been  accepted  and  has  not  been  opposed,  and  the  time  for 
notice  of  opposition  has  expired,  or  having  been  opposed,  the 
opposition  has  been  decided  in  favour  of  the  applicant,  the 
Registrar  shall  register  the  said  trade  mark,  and  the  trade 
mark,  when  registered,  shall  be  registered  as  of  the  date  of  the 
application  for  registration,  and  such  date  shall  be  deemed  for 
the  purposes  of  this  Ordinance  to  be  the  date  of  registration. 

CERTIFICATE  OF  REGISTRATION 

17.  On  the  registration  of  a  trade  mark  the  Registrar 
shall  issue  to  the  applicant  a  certificate  in  the  prescribed  form 
of  the  registration  of  such  trade  mark  under  the  hand  and  seal 
of  the  Registrar. 

NON-COMPLETION   OF  REGISTRATION 

18.  Where  registration  of  a  trade  mark  is  not  completed 
within  twelve  months  from  the  date  of  the  application  by  reason 
of  default  on  the  part  of  the  applicant,  the  Registrar  may,  after 
giving  notice  of  the  non-completion  to  the  applicant  in  writing 


HONGKONG  433 

in  the  prescribed  manner,  treat  the  application  as  abandoned 
unless  it  is  completed  within  the  time  specified  in  that  behalf  in 
such  notice. 

IDENTICAL  TRADE  MARKS 

19.  Except  in  the  case  of  trade  marks  in  use  before  the 
thirteenth  day  of  August  one  thousand  eight  hundred  and  sev- 
enty-five which  are  registered  in  the  United  Kingdom  as  old 
marks  used  before  the  said  date,  no  trade  mark  shall  be  regis- 
tered in  respect  of  any  goods  or  description  of  goods  which  is 
identical  with  one  belonging  to  a  different  proprietor  which  is 
already  on  the  register  with  respect  to  such  goods  or  descrip- 
tion of  goods,  or  so  nearly  resembling  such  a  trade  mark  as  to 
be  calculated  to  deceive. 

RIVAL  CLAIMS  TO  IDENTICAL  MARKS 

20.  Where  each  of  several  persons  claims  to  be  proprietor 
of  the  same  trade  mark,  or  of  nearly  identical  trade  marks  in 
respect  of  the  same  goods  or  description  of  goods,  and  to  be 
registered  as  such  proprietor,  the  Registrar  may  refuse  to  regis- 
ter any  of  them  until  their  rights  have  been  determined  by  the 
Court,  or  have  been  settled  by  agreement  in  a  manner  approved 
by  him  or  an  appeal  by  the  Court. 

PROTECTION  OF  MARKS  REGISTERED  IN  COUNTRY  OF  ORIGIN 

21.  The  Registrar  may  refuse  to  register  any  trade  mark 
if  it  is  proved  to  his  satisfaction  by  the  person  opposing  the 
application  for  registration  that  such  mark  is  identical  with, 
or  so  nearly  resembles  as  to  be  calculated  to  deceive,  any  trade 
mark  which  is  already  registered  (in  respect  of  goods  of  the 
same  description  as  those  in  respect  of  which  registration  in 
Hongkong  is  applied  for)   in  a  country  or  place  from  which 
goods  of  that  description  originate. 

Provided  always  that  no  application  to  register  shall  be 
refused  under  this  section  in  the  following  cases : 

(a)  if  the  applicant  proves  that  he  or  his  predecessors  in 
business  have  in  Hongkong  in  connection  with  such  goods  as 
aforesaid  continuously  used  the  trade  mark,  the  registration  of 
which  is  applied  for,  from  a  date  anterior  to  the  date  of  the 
registration  of  the  other  trade  mark  in  such  country  or  place 
of  origin;  or 

(b)  unless  the  opponent  gives  an  undertaking  to  the  satis- 
faction of  the  Registrar  that  he  will,  within  three  months  from 
the  giving  of  the  notice  of  opposition,  apply  for  registration  in 
Hongkong  of  the  trade  mark  so  registered  in  the  country  or 
place  of  origin,  and  will  take  all  necessary  steps  to  complete 
such  registration. 


434  HONGKONG 

ASSIGNMENT 
Assignment  and  Transmission  of  Trade  Marks 

22.  A  trade  mark  when  registered  shall  be  assigned  and 
transmitted  only  in  connection  with  the  goodwill  of  the  business 
concerned  in  the  goods  for  which  it  has  been  registered  and 
shall  be  determinable  with  that  goodwill.    But  nothing  in  this 
section  contained  shall  be  deemed  to  affect  the  right  of  the  pro- 
prietor of  a  registered  trade  mark  to  assign  the  right  to  use 
the  same  in  any  British  possession  or  protectorate  or  foreign 
country  in  connection  with  any  goods  for  which  it  is  registered 
together  with  the  goodwill  of  the  business  therein  in  such  goods. 

APPORTIONMENT  OF  MARKS  ON  DISSOLUTION  OF  PARTNERSHIP 

23.  In  any  case  where  from  any  cause,  whether  by  reason 
of  dissolution  of  partnership  or  otherwise,  a  person  ceases  to 
carry  on  business,  and  the  goodwill  of  such  person  does  not 
pass  to  one  successor  but  is  divided,  the  Registrar  may  (subject 
to  the  provision  of  this  Ordinance  as  to  associated  trade  marks), 
on  the  application  of  the  parties  interested,  permit  an  appor- 
tionment of  the  registered  trade  marks  of  the  person  among 
the  persons  in  fact  continuing  the  business,  subject  to  such  con- 
ditions and  modifications,  if  any,  as  he  may  think  necessary  in 
the  public  interest.    Any  decision  of  the  Registrar  under  this 
section  shall  be  subject  to  appeal  to  the  Court. 

ASSOCIATED  TRADE  MARKS 

24.  If  application  be  made  for  the  registration  of  a  trade 
mark  so  closely  resembling  a  trade  mark  of  the  applicant  al- 
ready on  the  register  for  the  same  goods  or  description  of 
goods  as  in  the  opinion  of  the  Registrar  to  be  calculated  to  de- 
ceive or  cause  confusion  if  used  by  a  person  other  than  the 
applicant,  the  Tribunal  hearing  the  applicant  may  require  as  a 
condition  of  registration  that  such  trade  marks  shall  be  en- 
tered on  the  register  as  associated  trade  marks. 

COMBINED  TRADE  MARKS 

25.  If  the  proprietor  of  a  trade  mark  claims  to  be  entitled 
to  the  exclusive  use  of  any  portion  of  such  trade  mark  sepa- 
rately, he  may  apply  to  register  the  same  as  separate  trade 
marks.     Each  such  separate  trade  mark  must  satisfy  all  the 
conditions  and  shall  have  all  the  incidents  of  an  independent 
trade  mark,  except  that  when  registered  it  and  the  trade  mark 
of  which  it  forms  a  part  shall  be  deemed  to  be  associated  trade 
marks  and  shall  be  entered  on  the  register  as  such,  but  the  user 
of  the  whole  trade  mark  shall  for  the  purposes  of  this  Ordinance 
be  deemed  to  be  also  a  user  of  such  registered  trade  marks 
belonging  to  the  same  proprietor  as  it  contains. 


HONGKONG  435 

SERIES  or  TRADE  MARKS 

26.  When  a  person  claiming  to  be  the  proprietor  of  several 
trade  marks  for  the  same  description  of  goods  which,  while  re- 
sembling each  other  in  the  material  particulars  thereof,  yet 
differ  in  respect  of: 

(a)  statements  of  the  goods  for  which  they  are  respectively 
used  or  proposed  to  be  used;  or 

(b)  statements   of  number,   price,  quality,   or  names   of 
places;  or 

(c)  other  matter  of  a  non-distinctive  character  which  does 
not  substantially  affect  the  identity  of  the  trade  mark ;  or 

(d)  colour; 

seeks  to  register  such  trade  marks,  they  may  be  registered  as 
a  series  in  one  registration.  All  the  trade  marks  in  a  series  of 
trade  marks  so  registered  shall  be  deemed  to  be,  and  shall  be 
registered  as,  associated  trade  marks. 

ASSIGNMENT  AND  USER  OF  ASSOCIATED  TRADE  MARKS 

27.  Associated  trade  marks  shall  be  assignable  or  trans- 
missible only  as  a  whole  and  not  separately,  but  they  shall  for 
all  other  purposes  be  deemed  to  have  been  registered  as  separate 
trade  marks.     Provided  that,  where  under  the  provisions  of 
this  Ordinance  user  of  a  registered  trade  mark  is  required  to 
be  proved  for  any  purpose,  the  Tribunal  may,  if  and  so  far  as 
it  shall  think  right,  accept  user  of  an  associated  registered  trade 
mark,  or  of  the  trade  mark  with  additions  or  alterations  not 
substantially  affecting  its  identity,  as  an  equivalent  for  such 
user. 

DURATION  OF  REGISTRATION 

28.  The  Registration  of  a  trade  mark  shall  be  for  a  period 
of  fourteen  years,  but  may  be  renewed  from  time  to  time  in 
accordance  with  the  provisions  of  this  Ordinance. 

RENEWAL  OF  REGISTRATION 

29.  The  Registrar  shall,  on  application  made  by  the  regis- 
tered proprietor  of  a  trade  mark  in  the  prescribed  manner  and 
within  the  prescribed  period,  renew  the  registration  of  such 
trade  mark  for  a  period  of  fourteen  years  from  the  expiration 
of  the  original  registration  or  of  the  last  renewal  of  registra- 
tion, as  the  case  may  be,  which  date  is  herein  termed  "the  ex- 
piration of  the  last  registration." 

PROCEDURE  ON  EXPIRY  OF  PERIOD  OF  REGISTRATION 

30.  At  the  prescribed  time  before  the  expiration  of  the 
last  registration  of  a  trade  mark  the  Registrar  shall  send  notice 
in  the  prescribed  manner  to  the  registered  proprietor  at  his 
registered  address  of  the  date  at  which  the  existing  registration 


436  HONGKONG 

will  expire  and  the  conditions  as  to  payment  of  fees  and  other- 
wise upon  which  a  renewal  of  such  registration  may  be  ob- 
tained, and  if,  at  the  expiration  of  the  time  prescribed  in  that 
behalf,  such  conditions  have  not  been  duly  complied  with,  the 
Registrar  may  remove  such  trade  mark  from  the  register,  sub- 
ject to  such  conditions  (if  any)  as  to  its  restoration  to  the  regis- 
ter as  may  be  prescribed. 

STATUS  OF  UNRENEWED  TRADE  MARKS 

31.  Where  a  trade  mark  has  been  removed  from  the  regis- 
ter for  non-payment  of  the  fee  for  renewal,  such  trade  mark 
shall,  nevertheless,  for  the  purpose  of  any  application  for  regis- 
tration during  one  year  next  after  the  date  of  such  removal, 
be  deemed  to  be  a  trade  mark  which  is  already  registered,  un- 
less it  is  shown  to  the  satisfaction  of  the  Registrar  that  there 
has  been  no  bond  fide  trade  user  of  such  trade  mark  during  the 
two  years  immediately  preceding  such  removal. 

CORRECTIONS  AND  RECTIFICATIONS  OF  THE  REGISTER 
Correction  of  Register 

32.  The  Registrar  may,  on  request  made  in  writing  by  the 
registered  proprietor  or  by  some  person  entitled  by  law  to  act 
in  his  name: 

(1)  Correct  any  error  in  the  name  or  address  of  the  regis- 
tered proprietor  of  a  trade  mark ;  or 

(2)  Enter  any  change  in  the  name  or  address  of  the  person 
who  is  registered  as  proprietor  of  a  trade  mark;  or 

(3)  Cancel  the  entry  of  a  trade  mark  on  the  register;  or 

(4)  Strike  out  any  goods  or  classes  of  goods  from  those 
for  which  a  trade  mark  is  registered;  or 

(5)  Enter  a  disclaimer  or  memorandum  relating  to  a  trade 
mark  which  does  not  in  any  way  extend  the  rights  given  by  the 
existing  registration  of  such  trade  mark. 

Any  decision  of  the  Registrar  under  this  section  shall  be 
subject  to  appeal  to  the  Court. 

REGISTRATION  OF  ASSIGNMENTS 

33.  Subject  to  the  provisions  of  this  Ordinance,  where  a 
person  becomes  entitled  to  a  registered  trade  mark  by  assign- 
ment, transmission,  or  other  operation  of  law,  the  Registrar 
shall,  on  request  made  in  the  prescribed  manner  and  on  proof 
of  title  to  his  satisfaction,  cause  the  name  and  address  of  such 
person  to  be  entered  on  the  register  as  proprietor  of  the  trade 
mark. 

Any  decision  of  the  Registrar  under  this  section  shall  be 
subject  to  appeal  to  the  Court. 


HONGKONG  437 

ALTERATION"  OF  REGISTERED  TRADE  MARK 

34.  The  registered  proprietor  of  any  trade  mark  may  ap- 
ply in  writing  to  the  Registrar  for  leave  to  add  to  or  alter  such 
trade  mark  in  any  manner  not  substantially  affecting  the  iden- 
tity of  the  same,  and  the  Registrar  may  refuse  such  leave  or 
may  grant  the  same  on  such  terms  as  he  may  think  fit,  but  any 
such  refusal  or  conditional  permission  shall  be  subject  to  ap- 
peal to  the  Court.    If  leave  be  granted,  the  trade  mark  as  al- 
tered shall  be  advertised  in  the  prescribed  manner. 

RECTIFICATION  OF  REGISTER 

35.  Subject  to  the  provisions  of  this  Ordinance: 

(1)  The  Court  may,  on  the  application  in  writing  of  any 
person  aggrieved  by  the  non-insertion  in  or  omission  from  the 
register  of  any  entry,  or  by  any  entry  made  in  the  register  with- 
out sufficient  cause,  or  by  any  entry  wrongly  remaining  on  the 
register,  or  by  any  error  or  defect  in  any  entry  in  the  register, 
make  such  order  for  making,  expunging,  or  varying  such  entry, 
as  it  may  think  fit. 

(2)  The  Court  may  in  any  proceeding  under  this  section 
decide  any  question  that  it  may  be  necessary  or  expedient  to 
decide  in  connection  with  the  rectification  of  the  register. 

(3)  In  case  of  fraud  in  the  registration  or  transmission  of 
a  registered  trade  mark  the  Registrar  may  himself  apply  to  the 
Court  under  the  provisions  of  this  section. 

(4)  Any  order  of  the  Court  rectifying  the  register  shall 
direct  that  notice  of  the  rectification  shall  be  served  upon  the 
Registrar  in  the  prescribed  manner,  who  shall  upon  receipt  of 
such  notice  rectify  the  register  accordingly. 

TRADE  MARKS  REGISTERED  UNDER  PREVIOUS  ACTS 

36.  No  trade  mark  which  is  upon  the  register  at  the  com- 
mencement of  this  Ordinance  and  which  under  this  Ordinance 
is  a  registrable  trade  mark  shall  be  removed  from  the  register 
on  the  ground  that  it  was  not  registrable  under  the  Ordinance 
in  force  at  the  date  of  its  registration.    But  nothing  in  this  sec- 
tion contained  shall  subject  any  person  to  any  liability  in  re- 
spect of  any  act  or  thing  done  before  the  commencement  of 
this  Ordinance  to  which  he  would  not  have  been  subject  under 
the  Ordinance  then  in  force. 

NON-USER  OF  TRADE  MARK 

37.  A  registered  trade  mark  may,  on  the  application  to 
the  Court  of  any  person  aggrieved,  be  taken  off  the  register  in 
respect  of  any  of  the  goods  for  which  it  is  registered,  on  the 
ground  that  it  was  registered  by  the  proprietor  or  a  predeces- 
sor in  title  without  any  bond  fide  intention  to  use  the  same  in 


438  HONGKONG 

connection  with  such  goods,  and  that  there  has  in  fact  been  no 
bond  fide  user  of  the  same  in  connection  therewith,  or  on  the 
ground  that  there  has  been  no  bond  fide  user  of  such  trade  mark 
in  connection  with  such  goods  during  the  five  years  immediately 
preceding  the  application,  unless  in  either  case  such  non-user 
is  shown  to  be  due  to  special  circumstances  in  the  trade,  and 
not  to  any  intention  not  to  use  or  to  abandon  such  trade  mark 
in  respect  to  such  goods. 

EFFECT  OF  REGISTRATION 
Power  of  Registered  Proprietor 

38.  Subject  to  the  provisions  of  this  Ordinance : 

(1)  The  person  for  the  time  being  entered  in  the  register 
as  proprietor  of  a  trade  mark  shall,  subject  to  any  rights  ap- 
pearing from  such  register  to  be  vested  in  any  other  person, 
have  power  to  assign  the  same,  and  to  give  effectual  receipts 
for  any  consideration  for  such  assignment. 

(2)  Any  equities  in  respect  of  a  trade  mark  may  be  en- 
forced in  like  manner  as  in  respect  of  any  other  property. 

RIGHTS  OF  PROPRIETOR  OF  TRADE  MARK 

39.  Subject  to  the  provisions  of  section  41  of  this  Ordi- 
nance and  to  any  limitations  and  conditions  entered  upon  the 
register,  the  registration  of  a  person  as  proprietor  of  a  trade 
mark  shall,  if  valid,  give  to  such  person  the  exclusive  right  to 
the  use  of  such  trade  mark  upon  or  in  connection  with  the  goods 
in  respect  of  which  it  is  registered ;  provided  always,  that  where 
two  or  more  persons  are  registered  proprietors  of  the  same 
(or  substantially  the  same)  trade  mark  in  respect  of  the  same 
goods,  no  rights  of  exclusive  user  of  such  trade  mark  shall,  ex- 
cept so  far  as  their  respective  rights  shall  have  been  denned 
by  the  Court,  be  acquired  by  any  one  of  such  persons  as  against 
any  other  by  the  registration  thereof,  but  each  of  such  persons 
shall  otherwise  have  the  same  rights  as  if  he  were  the  sole 
registered  proprietor  thereof. 

REGISTRATION  TO  BE  PRIMA  FACIE  EVIDENCE  OF  VALIDITY 

40.  In  all  legal  proceedings  relating  to  a  registered  trade 
mark  (including  applications  under  section  35  of  this  Ordinance) 
the  fact  that  a  person  is  registered  as  proprietor  of  such  trade 
mark  shall  be  primd  facie  evidence  of  the  validity  of  the  original 
registration  of  such  trade  mark  and  of  all  subsequent  assign- 
ments and  transmissions  of  the  same. 

REGISTRATION  TO  BE  CONCLUSIVE  AFTER  SEVEN  YEARS 

41.  In  all  legal  proceedings  relating  to  a  registered  trade 
mark  (including  applications  under  section  35  of  this  Ordinance) 
the  original  registration  of  such  trade  mark  shall  after  the  ex- 


HONGKONG  439 

piration  of  seven  years  from  the  date  of  such  original  registra- 
tion (or  seven  years  from  the  passing  of  this  Ordinance,  which- 
ever shall  last  happen)  be  taken  to  be  valid  in  all  respects  un- 
less such  original  registration  was  obtained  by  fraud  or  unless 
the  trade  mark  offends  against  the  provisions  of  section  11  of 
this  Ordinance. 

Provided  that  nothing  in  this  Ordinance  shall  entitle  the 
proprietor  of  a  registered  trade  mark  to  interfere  with  or  re- 
strain the  user  by  any  person  of  a  similar  trade  mark  upon  or 
in  connection  with  goods  upon  or  in  connection  with  which  such 
person  has,  by  himself  or  his  predecessors  in  business,  con- 
tinuously used  such  trade  mark  from  a  date  anterior  to  the  user 
of  the  first  mentioned  trade  mark  by  the  proprietor  thereof  or 
his  predecessors  in  business. 

REMOVAL  OF  MARK  ON  PROOF  OF  PRIOR  REGISTRATION  IN  COUNTRY 

OF  ORIGIN 

42.  (1)  The  Court  may,  on  the  application  in  writing 
made  within  seven  years  from  the  registration  of  a  trade  mark 
in  Hongkong  by  any  person  aggrieved  by  such  registration,  re- 
move such  trade  mark  from  the  Register,  if  it  is  proved  to  the 
satisfaction  of  the  Court  that  such  trade  mark  is  identical  with, 
or  so  nearly  resembles  as  to  be  calculated  to  deceive,  any  trade 
mark  which  was,  prior  to  the  registration  in  Hongkong  of  the 
first  mentioned  trade  mark,  registered  (in  respect  of  goods  of 
the  same  description  as  those  in  respect  of  which  the  first  men- 
tioned trade  mark  is  registered  in  Hongkong)  in  a  country  or 
place  from  which  goods  of  that  description  originate. 

Provided  always  that  no  trade  mark  shall  be  removed  from 
the  register  under  this  section  in  the  following  cases : 

(a)  if  the  proprietor  of  the  other  trade  mark  consented  to 
the  registration  in  Hongkong  of    the    first  mentioned  trade 
mark;  or 

(b)  if  the  proprietor  of  the  trade  mark  registered  in  Hong- 
kong proves  that  he  or  his  predecessors  in  business  have  con- 
tinuously used  such  trade  marks  in  Hongkong  in  connection 
with  such  goods  as  aforesaid  from  a  date  anterior  to  the  date 
of  the  registration  of  the  other  trade  mark  in  the  country  or 
place  of  origin;  or 

(c)  unless  the  applicant  proves  either  that  within  the  five 
years  immediately  preceding  the  making  of  the  application 
under  this  section  there  has  been  bond  fide  user  in  connection 
with  such  goods  as  aforesaid  in  Hongkong  of  the  trade  mark 
registered  in  the  country  or  place  of  origin  or  that  the  special 
circumstances  of  the  trade  account  for  the  non-user  of  such 
trade  mark  in  Hongkong  within  the  same  period  or  that  the 


440  HONGKONG 

trade  mark  so  registered  in  the  country  or  place  of  origin  was 
first  registered  there  within  the  like  period  of  five  years,  and 
in  either  event  gives  an  undertaking  to  the  satisfaction  of  the 
Register  that  he  will  within  three  months  from  the  making  of 
the  application  under  this  section  apply  for  registration  in 
Hongkong  of  the  trade  mark  so  registered  in  the  country  or 
place  of  origin,  and  will  take  all  necessary  steps  to  complete 
such  registration. 

(2)  All  applications  under  this  section  shall  be  heard  in 
open  court  in  Original  Jurisdiction. 

UNREGISTERED  TRADE  MARK 

43.  No  person  shall  be  entitled  to  institute  any  proceed- 
ings to  recover  damages  for  the  infringement  of  a  trade  mark 
not  registered  in  this  Colony. 

INFRINGEMENT 

44.  In  an  action  for  the  infringement  of  a  trade  mark  the 
Court  trying  the  question  of  infringement  shall  admit  evidence 
of  the  usages  of  the  trade  in  respect  to  the  get-up  of  the  goods 
for  which  the  trade  mark  is  registered,  and  of  any  trade  marks 
or  get-up  legitimately  used  in  connection  with  such  goods  by 
other  persons. 

USER  OF  NAME,  ADDRESS,  OR  DESCRIPTION  OF  GOODS 

45.  No  registration  under  this  Ordinance  shall  interfere 
with  any  bond  fide  use  by  a  person  of  his  own  name  or  place  of 
business,  or  that  of  any  of  his  predecessors  in  business  or  the 
use  by  any  person  of  any  bond  fide  description  of  the  character 
or  quality  of  his  goods. 

"PASSING  OFF"  ACTION 

46.  Nothing  in  this  Ordinance  contained  shall  be  deemed 
to  affect  rights  of  action  against  any  person  for  passing  off 
goods  as  those  of  another  person  or  the  remedies  in  respect 
thereof. 

LEGAL  PROCEEDINGS 
Certificate  of  Validity 

47.  In  any  legal  proceedings  in  which  the  validity  of  the 
registration  of  a  registered  trade  mark  comes  into  question 
and  is  decided  in  favour  of  the  proprietor  of  such  trade  mark, 
the  Court  may  certify  the  same,  and  if  it  so  certifies,  then  in 
any  subsequent  legal  proceeding  in  which  such  validity  comes 
into  question  the  proprietor  of  the  said  trade  mark  on  obtaining 
a  final  order  or  judgment  in  his  favour  shall  have  his  full  costs, 
charges  and  expenses  as  between  solicitor  and  client  unless  in 
such  subsequent  proceeding  the  Court  certifies  that  he  ought 
not  to  have  the  same. 


HONGKONG  441 

REGISTRAR  TO  HAVE  NOTICE  OP  PROCEEDING  FOR  RECTIFICATION 

48.  In  any  legal  proceeding  in  which  the  relief  sought  in- 
cludes alteration  or  rectification  of  the  register,  the  Registrar 
shall  have  the  right  to  appear  and  be  heard,  and  shall  appear 
if  so  directed  by  the  Court.    Unless  otherwise  directed  by  the 
Court,  the  Registrar  in  lieu  of  appearing  and  being  heard  may 
submit  to  the  Court  a  statement  in  writing  signed  by  him,  giv- 
ing particulars  of  the  proceedings  before  him  in  relation  to  the 
matter  in  issue  or  of  the  grounds  of  any  decision  given  by  him 
affecting  the  same  or  of  the  practice  of  the  office  in  like  cases, 
or  of  such  other  matters  relevant  to  the  issues,  and  within  his 
knowledge  as  such  Registrar,  as  he  shall  think  fit,  and  such 
statement  shall  be  deemed  to  form  part  of  the  evidence  in  the 
proceedings. 

COSTS 
Costs  of  Proceedings  Before  Court 

49.  In  all  proceedings  before  the  Court  under  this  Ordi- 
nance the  costs  of  the  Registrar  shall  be  in  the  discretion  of 
the  Court,  but  the  Registrar  shall  not  be  ordered  to  pay  the 
costs  of  any  other  of  the  parties. 

EVIDENCE 
Mode  of  Giving  Evidence 

50.  In  any  proceeding  under  this  Ordinance  before  the 
Registrar  or  the  Governor,  the  evidence  shall  be  given  by  statu- 
tory declaration  in  the  absence  of  directions  to  the  contrary, 
but,  in  any  case  in  which  he  shall  think  it  right  so  to  do,  the 
Registrar  or  the  Governor  may  (with  the  consent  of  the  parties) 
take  evidence  viva  voce  in  lieu  of  or  in  addition  to  evidence  by 
declaration.    Any  such  statutory  declaration  may  in  the  case 
of  appeal  be  used  before  the  Court  in  lieu  of  evidence  by  affida- 
vit, but  if  so  used  shall  have  all  the  incidents  and  consequences 
of  evidence  by  affidavit. 

In  case  any  part  of  the  evidence  is  taken  viva  voce  the 
Registrar  or  the  Governor  shall  in  respect  of  requiring  the  at- 
tendance of  witnesses  and  taking  evidence  on  oath  be  in  the 
same  position  in  all  respects  as  a  Special  Referee  of  the  Supreme 
Court. 

SEALED  COPIES  TO  BE  EVIDENCE 

51.  Printed  or  written  copies  or  extracts  of  or  from  the 
register,  purporting  to  be  certified  by  the  Registrar  under  his 
seal,  shall  be  admitted  in  evidence  in  all  courts,  and  in  all  pro- 
ceedings, without  further  proof  or  production  of  the  originals. 

CERTIFICATE  OF  REGISTRAR  TO  BE  EVIDENCE 

52.  A  certificate  purporting  to  be  under  the  hand  of  the 


442  HONGKONG 

Registrar  as  to  any  entry,  matter,  or  thing  which  he  is  author- 
ized by  this  Ordinance,  or  rules  made  thereunder,  to  make  or 
do,  shall  be  primd  facie  evidence  of  the  entry  having  been  made, 
and  of  the  contents  thereof,  and  of  the  matter  or  thing  having 
been  done  or  not  done. 

POWERS  AND  DUTIES  OP  REGISTRAR  OF  TRADE  MARKS 
Exercise  of  Discretionary  Power  by  Registrar 

53.  Where  any  discretionary  or  other  power  is  given  to 
the  Registrar  by  this  Ordinance  or  rules  made  thereunder,  he 
shall  not  exercise  that  power  adversely  to  the  applicant  for 
registration  or  the  registered  proprietor  of  the  trade  mark  in 
question  without  (if  duly  required  so  to  do  within  the  prescribed 
time)  giving  such  applicant  or  registered  proprietor  an  oppor- 
tunity of  being  heard. 

APPEAL  FROM  REGISTRAR 

54.  Except  where  expressly  given  by  the  provisions  of  this 
Ordinance  or  rules  made  thereunder  there  shall  be  no  appeal 
from  a  decision  of  the  Registrar  otherwise  than  to  the  Gover- 
nor, but  the  Court,  in  dealing  with  any  question  of  the  rectifica- 
tion of  the  register  (including  all  applications  under  the  pro- 
visions of  section  35  of  this  Ordinance),  shall  have  power  to 
review  any  decision  of  the  Registrar  relating  to  the  entry  in 
question  or  the  correction  sought  to  be  made. 

RECOGNITION  OF  AGENTS 

55.  Where  by  this  Ordinance  any  act  has  to  be  done  by 
or  to  any  person  in  connection  with  a  trade  mark  or  proposed 
trade  mark  or  any  procedure  relating  thereto,  such  act  may 
under  and  in  accordance  with  rules  made  under  this  Ordinance 
be  done  by  or  to  an  agent  of  such  party  duly  authorized  in  the 
prescribed  manner. 

RULES 
Power  of  Governor-in-Council  to  Make  Rules 

56.  (1)  Subject  to  the  provisions  of  this  Ordinance  the 
Governor-in-Council  may  from  time  to  time  make  such  rules, 
prescribe  such  forms  and  generally  do  such  things  as  he  thinks 
expedient : 

(a)  For  regulating  the  practice  under  this  Ordinance; 

(b)  For  classifying  goods  for  the  purposes  of  registration 
of  trade  marks; 

(c)  For  making  or  requiring  duplicates  of  trade  marks  and 
other  documents; 

(d)  For  securing  and  regulating  the  publishing  and  selling 
or  distributing,  in   such  manner  as   the   Governor-in-Council 
thinks  fit,  of  copies  of  trade  marks  and  other  documents ; 


HONGKONG  443 

(e)  Generally,  for  regulating  the  business  of  the  office  in 
relation  to  trade  marks  and  all  things  by  this  Ordinance  placed 
under  the  direction  or  control  of  the  Registrar. 

(2)  Rules  made  under  this  section  shall,  whilst  in  force,  be 
of  the  same  effect  as  if  they  were  contained  in  this  Ordinance. 

(3)  Any  rules  made  in  pursuance  of  this  section  shall  be 
forthwith  published  in  the  Gazette. 

FEES 

57.  There  shall  be  paid  in  respect  of  applications  and 
registration  and  other  matters  under  this  Ordinance  such  fees 
as  may  be  prescribed  by  the  Governor-in-Council  and  a  list  of 
such  fees  shall  forthwith  be  published  in  the  Gazette. 

SPECIAL  TRADE  MARKS 
Standardization  of  Trade  Marks 

58.  Where  any  association  or  person  undertakes  the  exam- 
ination of  any  goods  in  respect  of  origin,  material,  mode  of 
manufacture,  quality,  accuracy,  or  other  characteristic,  and  cer- 
tifies the  result  of  such  examination  by  mark  used  upon  or  in 
connection  with  such  goods,  the  Governor-in-Council  may,  if 
he  shall  judge  it  to  be  to  the  public  advantage,  permit  such  asso- 
ciation or  person  to  register  such  mark  as  a  trade  mark  in 
respect  of  such  goods,  whether  or  not  such  association  or  per- 
son be  a  trading  association  or  trader  or  possessed  of  a  good- 
will in  connection  with  such  examination  and  certifying.    When 
so  registered  such  trade  mark  shall  be  deemed  in  all  respects 
to  be  a  registered  trade  mark,  and  such  association  or  person 
to  be  the  proprietor  thereof,  save  that  such  trade  mark  shall 
be  transmissible  or  assignable  only  by  permission  of  the  Gover- 
nor-in-Council. 

OFFENCES 
Falsification  of  Entries  in  Register 

59.  If  any  person  makes  or  causes  to  be  made  a  false  entry 
in  the  register  kept  under  this  Ordinance  or  a  writing  falsely 
purporting  to  be  a  copy  of  an  entry  in  any  such  register,  or 
produces  or  tenders  or  causes  to  be  produced  or  tendered  in 
evidence  any  such  writing,  knowing  the  entry  or  writing  to  be 
false,  he  shall  be  guilty  of  a  misdemeanor. 

PENALTY  ON  FALSELY  REPRESENTING  A  TRADE  MARK  AS  REGISTERED 

60.  (1)  Any  person  who  represents  a  trade  mark  as  regis- 
tered in  Hongkong  which  is  not  so  shall  be  liable  for  every 
offence  on  summary  conviction  to  a  fine  not  exceeding  fifty 
dollars. 

(2)  A  person  shall  be  deemed,  for  the  purposes  of  this 
Ordinance,  to  represent  that  a  trade  mark  is  registered  in  Hong- 


444  HONGKONG 

kong,  if  he  uses  in  connection  with  the  trade  mark  the  words 
" registered  in  Hongkong,"  or  any  words  expressing  or  imply- 
ing that  registration  has  been  obtained  in  Hongkong  for  the 
trade  mark. 

ROYAL  ARMS 
Unauthorized  Assumption  of  Royal  Arms 

61.  If  any  person,  without  the  authority  of  His  Majesty, 
uses  in  connection  with  any  trade,  business,  calling,  or  profes- 
sion, the  Royal  Arms  (or  arms  so  closely  resembling  the  same 
as  to  be  calculated  to  deceive)  in  such  manner  as  to  be  calcu- 
lated to  lead  to  the  belief  that  he  is  duly  authorized  so  to  use 
the  Royal  Arms,  or  if  any  person  without  the  authority  of  His 
Majesty  or  of  a  member  of  the  Royal  Family,  uses  in  connection 
with  any  trade,  business,  calling,  or  profession  any  device,  em- 
blem, or  title  in  such  manner  as  to  be  calculated  to  lead  to  the 
belief  that  he  is  employed  by  or  supplies  goods  to  His  Majesty 
or  such  member  of  the  Royal  Family,  he  may,  at  the  suit  of  any 
person  who  is  authorized  to  use  such  arms  or  such  device,  em- 
blem, or  title,  or  is  authorized  by  the  Governor  to  take  pro- 
ceedings in  that  behalf,  be  restrained  by  injunction  or  interdict 
from  continuing  so  to  use  the  same:  Provided  that  nothing  in 
this  section  shall  be  construed  as  affecting  the  right,  if  any,  of 
the  proprietor  of  a  trade  mark  containing  any  such  arms,  de- 
vice, emblem,  or  title  to  continue  to  use  such  trade  mark. 

REPEAL  OF  PREVIOUS  ENACTMENT 
Repeal  of  Previous  Ordinance  and  Saving 

62.  The  Trade  Marks  Ordinance,  1898,  is  hereby  repealed 
and  all  rules  made  thereunder  are  hereby  revoked  as  and  from 
the  first  day  of  April,  1910 :  Provided  always  that  the  provisions 
of  that  Ordinance  shall  apply  to  all  such  applications  as  may  be 
pending  at  the  date  of  the  commencement  of  this  Ordinance. 

COMMENCEMENT  OF  ORDINANCE 

63.  The  Governor  may  appoint  the  Registrar  under  this 
Ordinance  immediately  after  the  passing  hereof,  and  thereafter 
all  matters  and  things  hitherto  transacted  and  done  by  the  Colo- 
nial Secretary  under  the  Trade  Marks  Ordinance,  1898,  and 
all  rules  made  thereunder  may  be  transacted  and  done  by  the 
Registrar,  but  in  all  other  respects  this  Ordinance  shall  come 
into  operation  on  the  first  day  of  April,  1910,  which  shall  be 
deemed  to  be  the  date  of  the  commencement  of  this  Ordinance. 


HUNGARY 

LAW  OF  JANUARY  6,  1890,*  AS  AMENDED  APRIL  13, 
1913,  AND  BY  LEGISLATIVE  ARTICLE  XXII  OF  1921 

SECTION  I 

GENERAL,  PROVISIONS 

ARTICLE  1.  In  this  law,  under  the  term  "Marks'*  are  un- 
derstood the  special  marks  (such  as  devices,  numbers,  vignettes 
and  the  like)  that  serve  to  distinguish  in  commerce  certain 
products  and  goods  from  other  similar  products  and  goods. 

In  the  decision  as  to  whether  a  mark  is  adapted  therefor, 
there  shall  be  taken  into  consideration  all  facts,  in  particular 
the  duration  of  the  use  of  the  mark,  in  accordance  with  the 
conception  of  the  line  of  business  concerned. 

ART.  2.  Any  person  wishing  to  secure  the  exclusive  right 
to  use  a  mark  must  obtain  the  registration  of  the  same  con- 
formably with  the  provisions  of  the  following  sections. 

ART.  3.  Excluded  from  being  registered,  and,  accordingly, 
no  exclusive  right  to  them  can  be  obtained,  are  such  marks : 

1)  As  are  exclusively  composed  of  portraits  of  the  Em- 
peror or  of  members  of  the  Imperial  House ; 

2)  As  merely  consist  of  the  national  or  other  public  arms, 
or  words; 

3)  As  are  in  general  commercial  use  for  certain  kinds  of 
goods ; 

4)  As  contain  improper  representations  causing  scandal  or 
otherwise  contrary  to  public  morality,  or  such  inscriptions  or 
statements  as  do  not  correspond  to  the  actual  commercial  state 
of  affairs  or  the  truth,  and  are  liable  to  deceive  the  consuming 
public. 

ART.  4.  Such  marks  in  which  portraits  of  the  Emperor  or 
of  members  of  the  Imperial  House,  a  distinction  of  honor,  the 
Imperial  Eagle  or  public  arms,  form  a  constituent  part,  shall 
only  be  registered  if  the  right  to  use  these  special  marks  within 
the  meaning  of  the  existing  provisions  shall  have  been  pre- 
viously evidenced. 

ART.  5.  No  person  shall  be  prevented,  through  the  regis- 
tration of  any  mark  which  also  contains  letters  or  words,  from 
using  his  name  or  that  of  his  firm,  even  if  it  be  in  an  abbre- 
viated form,  for  distinguishing  his  goods. 


"Official  title  is  "Legislative  Article  II  of  1890." 


446  HUNGARY 

ART.  6.  The  use  of  registered  marks  is  in  general  optional, 
but  the  Minister  of  Commerce  may  decree,  as  regards  certain 
kinds  of  goods,  that  goods  of  that  class  shall  not  be  put  into 
circulation  unless  they  are  provided  with  marks  registered  in 
the  sense  of  this  law,  according  to  the  procedure  to  be  stipulated. 

ART.  7.  The  sole  right  to  a  mark  shall  not  exclude  the  use 
of  the  same  mark  by  another  applicant  for  other  classes  of 
goods. 

In  case  of  any  doubt  relative  to  the  similarity  of  these 
classes  of  goods,  the  Minister  of  Commerce  shall  decide  after 
consultation  with  the  Chamber  of  Commerce  and  Industry  (See 
Art.  13). 

ART.  8.  The  application  for  several  marks  in  the  name  of 
one  applicant,  even  if  they  are  for  the  same  class  of  goods,  is 
permitted  conformably  with  the  provisions  of  this  law. 

ART.  9.  The  right  to  a  mark  shall  go  with  the  business  for 
which  the  mark  is  intended,  shall  expire  with  the  same,  and  shall 
be  transferred  to  the  new  proprietor  in  case  of  transfer  of 
ownership. 

The  new  owner,  however,  if  he  does  not  continue  to  conduct 
his  business  under  an  unchanged  name,  shall  effect  the  assign- 
ment of  the  mark.  Until  this  assignment  has  been  executed  in 
the  Register  of  the  Chamber  of  Commerce  and  Industry,  he 
cannot  make  valid  the  right  to  the  mark,  and  all  official  com- 
munications relating  to  the  mark  may  be  forwarded,  to  his  dis- 
advantage, to  the  registered  owner  of  the  mark  or  to  his  repre- 
sentative of  record. 

ART.  10.  No  person  shall  make  use  of  the  name,  firm,  in- 
signia, or  trade  name  of  the  establishment  of  another  manu- 
facturer or  merchant  for  distinguishing  goods  or  products  with- 
out the  consent  of  the  party  in  question. 

ART.  11.  Everything  that  is  stated  in  this  law  regarding 
the  marking  of  goods  applies  also  to  the  marks  affixed  to  the 
cases,  barrels,  wrappers  and  the  like. 

ART.  12.  Nothing  is  altered  by  the  present  law  in  the  exist- 
ing provisions  relating  to  special  marks  for  certain  goods, 
especially  the  provisions  as  to  punched  marks. 

SECTION  II 

REGISTRATION,  TRANSFER,  AND  EXTINCTION  OF  MARKS 

1.    Registration 

ART.  13.  Four  copies  of  the  mark  for  which  any  person 
shall  desire  to  obtain  the  exclusive  right  must  be  filed  in  the 
Chamber  of  Commerce  and  Industry  in  whose  district  the  busi- 
ness in  question  is  situated. 


HUNGARY  447 

One  copy  shall  be  attached  to  the  Register  of  Marks  which 
is  to  be  kept  by  the  Chamber  of  Commerce  and  Industry;  one 
copy  shall  be  returned  to  the  applicant,  inscribed  with  the 
acknowledgment  prescribed  in  the  succeeding  paragraph. 

Two  copies  shall  be  laid  before  the  Minister  of  Commerce. 

The  applicant  must,  at  the  same  time,  state  for  what  classes 
of  goods  his  mark  is  intended. 

Further,  a  cliche  (electrotype)  of  each  mark  must  be  filed 
with  the  Chamber  of  Commerce  and  Industry,  which  will  be 
returned  to  the  applicant  after  having  been  used. 

In  the  case  of  marks  for  materials  such  as  metal,  earthen- 
ware, glass  and  the  like,  at  least  three  samples  of  the  materials 
with  the  marks  impressed  therein  shall  be  filed. 

ART.  14.  Upon  each  specimen  of  the  marks  filed,  the  Bu- 
reau designated  by  the  Chamber  of  Commerce  and  Industry 
shall  note: 

a)  The  serial  number  of  the  Register; 

b)  The  day  and  hour  of  the  filing; 

c)  The  name  or  the  firm  for  which  the  mark  is  to  be  regis- 
tered ; 

d)  The  indication  of  the  business  and  goods  for  which  it 
is  intended. 

This  notation  must  be  signed  and  the  official  seal  affixed. 

The  Registers  of  Marks  shall  contain  the  details  cited  in 
paragraphs  (a)  to  (d)  and  shall  be  open  to  inspection  at  the 
Chambers  of  Commerce  and  Industry. 

ART.  15.  The  registration  of  each  mark  is  subject  to  a  fee 
of  200  kroner,  of  which  75  per  cent  shall  belong  to  the  funds  of 
the  Chamber  of  Commerce  and  Industry  at  which  the  registra- 
tion has  been  effected,  and  25  per  cent  to  those  of  the  Ministry 
of  Commerce  (Patent  Office)  charged  with  keeping  the  Central 
Register  of  Marks. 

ART.  16.  The  registration  of  marks  shall  be  renewed  every 
ten  years,  reckoning  from  the  date  of  registration,  by  a  fresh 
payment  of  the  fee;  otherwise  the  right  to  the  mark  will  be 
considered  as  expired. 

ART.  17.  A  Central  Register  of  Marks  shall  be  kept  at  the 
Ministry  of  Commerce,  in  which  the  marks  registered  in  the 
Chambers  of  Commerce  and  Industry  shall  be  entered  in  rota- 
tion as  they  arrive. 

The  same  details  shall  be  given  in  the  general  Register  of 
Marks  as  are  contained  in  the  Registers  to  be  kept  by  the  Cham- 
bers of  Commerce  and  Industry  (See  Art.  14). 

The  Central  Register  of  Marks,  as  well  as  the  catalogues 
of  its  contents,  which  are  to  be  alphabetically  arranged  and 


448  HUNGARY 

always  kept  up  to  date,  shall  be  kept  open  for  inspection  in 
the  offices  of  the  Ministry  in  question. 

The  same  applies  to  the  samples  (Art.  13). 

Prints  of  the  marks,  after  the  latter  have  been  entered  in 
the  Central  Register,  shall  be  published,  using  the  blocks  fur- 
nished (as  per  Art.  13). 

ART.  18.  The  Minister  of  Commerce,  if  necessary,  after 
consultation  with  experts,  shall  notify  the  applicant  for  protec- 
tion if  a  mark  identical  or  similar  to  the  one  just  applied  for 
exists  already  for  the  same  class  of  goods,  in  order  that  the 
applicant,  according  to  his  judgment,  may  sustain,  modify  or 
withdraw  the  application. 

The  proprietor  of  the  previously  registered  mark  shall  be, 
at  the  same  time,  informed  that  notice  has  been  given  to  the 
applicant  for  protection  of  the  mark. 

ART.  19.  The  exclusive  right  to  use  a  mark  by  an  appli- 
cant shall  commence  from  the  day  and  hour  of  filing  the  same 
at  the  Chamber  of  Commerce  and  Industry,  and  the  priority 
shall  be  decided  therefrom,  should  similar  marks  have  been 
filed  by  several  applicants  for  protection  at  the  same  or  different 
Chambers  of  Commerce  and  Industry. 

2.  Transfers 

ART.  20.  In  order  to  transfer  the  right  to  a  mark,  within 
the  meaning  of  Art.  9,  the  assignee  must  produce  proof  of  his 
having  acquired  the  business  to  which  it  relates. 

The  transfer  shall  be  subject  to  the  same  tax  as  the  first 
registration  (Art.  15),  and  shall  be  entered  on  the  certificate 
granted  to  the  applicant  (Art.  13,  paragraph  2),  as  well  as  in 
the  Register  of  the  Chamber  of  Commerce  and  Industry  (Art. 
14),  and  in  the  Central  Register  of  Marks  (Art.  17),  and  pub- 
lished (Art.  17,  last  paragraph). 

3.  Extinction 
ART.  21.    Marks  shall  become  extinct: 

a)  On  application  of  the  proprietor  of  the  mark; 

b)  If  the  registration  shall  not  have  been  renewed  when 
due  under  the  provisions  of  Art.  16; 

c)  .  .  .  (repealed  by  law  of  March  17, 1913.) 

d)  If  the  Minister  of  Commerce  shall  decide  that  the  mark 
should  not  have  been  registered ; 

e)  In  consequence  of  the  decision  of  the  Minister  of  Com- 
merce pronounced  in  any  action  as  to  the  existence  of  a  right  to 
a  mark  (Art.  30). 

ART.  22.  The  extinction  of  a  mark  shall  be  entered  on  the 
certificate  (Art.  14),  as  well  as  in  the  Register  of  the  Chamber 


HUNGARY  449 

of  Commerce  and  Industry  (Art.  14),  and  on  the  Central  Trade 
Mark  Register,  and  shall  be  published  (Art.  17). 

SECTION  III 

INFRINGEMENT  OP  THE  RIGHTS  TO  A  MARK 

ART.  23.  Any  person  who  shall  knowingly  put  in  circula- 
tion or  keep  for  sale  goods  that  are  unauthorizedly  marked  with 
a  mark  the  exclusive  right  of  user  of  which  belongs  to  another, 
and  further,  any  person  who  for  this  purpose  knowingly  coun- 
terfeits a  mark  commits  an  offence  and  shall  be  liable  to  be 
punished  by  a  fine  of  from  500  to  2,000  gulden. 

In  case  of  repetition,  unless  ten  years  have  expired  since 
the  last  conviction,  the  penalty  may  be  imprisonment  for  not 
more  than  three  months,  with  a  fine  of  from  500  to  3,000  gulden. 

If  a  greater  penalty  can  be  applied  through  application  of 
the  Penal  Code,  and,  particularly  if  there  be  fraud  or  crime, 
there  may  be  applied  the  provisions  of  this  Code. 

ART.  24.  The  stipulation  of  Art.  23  applies  also  to  those 
who  knowingly  put  in  circulation,  or  keep  for  sale,  goods  that 
are  unauthorizedly  marked  with  the  name,  firm,  insignia,  or 
trade  name  of  the  establishment  of  a  producer  or  merchant,  or 
a  domestic  manufacturer ;  further,  to  those  who  knowingly  fab- 
ricate such  marks. 

ART.  25.  The  liability  to  punishment  for  the  acts  enu- 
morated  in  Arts.  23  and  24  is  not  avoided  if  the  mark,  name, 
firm,  insignia,  business  style  of  the  establishment,  be  reproduced 
with  so  slight  an  alteration  or  in  such  an  indistinct  manner  that 
the  difference  might  be  detected  by  the  ordinary  purchaser  of 
the  goods  in  question  only  through  special  watchfulness. 

ART.  26.  The  Royal  Tribunals  shall  be  charged  with  the 
repression  of  the  crimes  foreseen  by  Arts.  23  and  24,  also  in 
the  Croat  and  Slav  Provinces. 

ART.  27.  Prosecution  shall  be  initiated  only  on  petition  of 
the  injured  party.  On  petition  of  the  injured  party  an  order 
shall  be  made  that  the  tools  and  appliances  exclusively  or 
specially  used  for  the  counterfeiting  or  unauthorized  reproduc- 
tion shall  be  rendered  unserviceable  for  this  purpose,  that  the 
stocks  of  counterfeit  marks  and  unauthorizedly  manufactured 
labels  shall  be  destroyed,  and  the  unauthorized  marks  and  labels 
removed  from  goods  found  in  the  possession  of  the  guilty  per- 
sons, or,  in  this  respect,  from  the  packages  of  the  same,  even 
if  that  should  involve  the  destruction  of  the  goods. 

The  injured  party  shall  be  further  authorized  to  publicly 
make  known  the  judgment  against  the  infringer  at  the  expense 
of  the  latter.  The  mode  of  publication,  as  well  as  the  duration 


450  HUNGARY 

of  the  same,  shall  be  fixed  in  the  decision  after  consideration 
of  the  petition  of  the  injured  party. 

On  application  of  the  injured  party,  instead  of  the  com- 
pensation due  to  him  on  his  private  rights,  in  addition  to  the 
penalty,  a  monetary  fine  to  the  amount  of  5,000  gulden,  to  be 
handed  to  the  injured  party,  may  be  decreed  by  the  Court  of 
Justice,  the  amount  to  be  fixed  after  free  and  careful  considera- 
tion of  all  the  circumstances.  Persons  sentenced  to  pay  a  mone- 
tary fine  shall  be  considered  as  joint  debtors.  The  provisions 
of  this  paragraph  shall  apply,  even  if  the  punishment  take  place 
under  the  stricter  stipulation  of  the  general  Penal  Code. 

ART.  28.  The  injured  party  shall  be  entitled,  even  before 
the  punitive  judgment  is  decreed,  to  demand  the  confiscation 
or  seizure  of  the  articles  enumerated  in  Art.  27,  paragraph  1, 
so  that  a  repetition  of  the  punishable  act  may  be  prevented. 

The  Criminal  Court  shall  adjudicate  immediately  on  this 
application,  and  it  shall  also  be  optional  for  it  to  authorize  the 
desired  confiscation  and  corresponding  custody,  as  well  as  the 
other  measures  desired,  only  against  security  to  be  given  by 
the  injured  party. 

ART.  29.  Should  the  injured  party  demand,  for  any  of  the 
offences  described  in  Arts.  23  and  24,  the  grant  of  compensation 
through  a  Civil  Court,  the  latter  shall  decide  as  to  the  right  to 
compensation,  as  well  as  the  amount  of  the  same,  after  due  con- 
sideration of  all  the  circumstances. 

The  Minister  of  Commerce  shall  decide  the  point  whether 
the  exclusive  right  of  user  of  a  mark  pertains  to  any  person, 
also  as  to  the  priority  and  transfer  of  this  right,  and  also 
whether  a  registered  mark  may  be  used  by  another  party  for 
a  different  class  of  goods.  (Art.  7.) 

Should  it  appear,  in  the  court  of  criminal  proceedings  in 
any  of  the  cases  enumerated  in  Art.  23,  that  a  decision  of  a 
question  is  dependent  upon  a  prior  question,  regarding  which, 
under  the  first  paragraph,  the  Minister  of  Commerce  has  to 
adjudicate,  the  Criminal  Court  shall,  after  submitting  the  neces- 
sary documents  to  the  Minister  in  question,  request  him  to 
decide  this  question  first  and  shall  await  the  notice  of  same. 

ART.  30.  Section  413  of  Law  No.  5  of  1878  shall  be  abro- 
gated following  the  coming  into  effect  of  the  present  law. 

ART.  31.  If  the  Minister  of  Commerce  shall  order,  with 
regard  to  certain  kinds  of  goods,  that,  before  being  placed  in 
commerce,  they  shall  be  provided  with  registered  marks,  in  the 
manner  that  shall  be  prescribed,  any  person  that  shall  not  com- 
ply with  this  order  shall  render  himself  guilty  of  a  crime  and 
shall  be  amenable  to  a  fine  of  from  20  to  200  gulden  in  con- 


HUNGARY  451 

formity  with  Sec.  157,  paragraph  (d),  of  Law  No.  17  of  1884; 
in  addition,  his  goods  shall  be  seized. 

These  crimes  shall  be  of  cognizance  of  the  jurisdiction  of 
the  industrial  authorities  mentioned  in  Sec.  166  of  Law  No.  17 
of  1884,  who  shall  comply  with  the  procedure  prescribed  for  the 
industrial  crimes  submitted  to  their  decision. 

SECTION  IV 

MARKS  RELATING  TO  ENTERPRISES  OUTSIDE  HUNGARY 

ART.  32.  As  regards  the  protection  of  marks,  as  well  as 
of  names,  firms,  insignia,  or  trade  names  of  establishments  of 
foreign  enterprises,  this  shall  take  place  in  accordance  with 
treaties  or  conventions  concluded  with  the  States  in  question. 

The  owners  of  foreign  establishments  shall  be  entitled  to 
the  protection  of  this  law  as  respects  the  classes  of  trade  marks 
of  non-Hungarian  enterprises  specified  in  the  first  paragraph, 
in  respect  of  which  reciprocity  exists,  in  so  far  as  no  agreements 
or  conventions  exist. 

The  existence  of  reciprocity  shall  be  made  known  through 
a  decree  to  be  published  in  the  Reichsgesetzblatt. 

The  regulations  of  the  Customs  and  Commercial  Union 
shall  decide  under  what  conditions  marks  registered  in  the  ter- 
ritory of  the  Royal  Austrian  Crown,  and  also  names,  firms, 
insignia,  or  trade  designations  of  establishments  of  manufac- 
turers or  merchants  of  that  country,  shall  share  in  the  protec- 
tion secured  by  this  law. 

SECTION  V 

CONCLUDING  REGULATIONS 

ART.  33.  Marks  that  shall  have  been  registered  under  for- 
mer provisions  and  with  reference  to  which,  under  Art.  16,  the 
stipulated  period  of  ten  years  for  new  registration  from  the  time 
of  registration  to  the  coming  into  effect  of  this  law  has  not  yet 
elapsed,  shall  enjoy,  until  the  lapse  of  the  ten  years,  the  pro- 
tection accorded  under  the  provisions  of  this  law  without  re- 
registration. 

On  the  other  hand,  any  mark  that,  on  the  coming  into  force 
of  this  law,  shall  have  been  registered  more  than  ten  years, 
shall,  after  the  lapse  of  three  months,  reckoned  from  the  time 
of  coming  into  force  of  this  law,  be  stricken  from  the  Register 
if  the  proprietor  of  the  mark  in  question  shall  not  have  regis- 
tered it  anew  during  this  interval. 

Such  applications  as  shall  be  pending  at  the  time  of  the 
coming  into  force  of  this  law  shall  be  completed  before  those 


452  HUNGAKY 

authorities  that  have  previously  been  competent,  and  on  the 
ground  of  former  provisions. 

ART.  34.  Whenever  mention  is  made  in  the  present  law  of 
civil  law  or  the  Penal  Code,  there  must  be  understood,  in  what- 
ever concerns  the  Croat  and  Slav  Provinces,  the  law  in  force  in 
these  countries. 

ART.  35.  This  law  shall  become  of  effect  three  months  after 
its  promulgation.  The  Ministers  of  Commerce  and  of  Justice 
are  charged  with  its  execution;  however,  in  whatever  concerns 
the  Croat  and  Slav  Provinces,  the  execution  thereof  shall  be 
confided  to  the  Minister  of  Commerce,  who  shall  confer  on  this 
subject  with  the  Ban  of  Croatia,  Slavonia  and  Dalmatia. 

LAW  AMENDING  AND  COMPLEMENTING  THOSE  RE- 
GARDING THE  PROTECTION  OF  MARKS 

(LEGISLATIVE  ARTICLE  XXII  OF  1921) 

ARTICLE  1.  Sec.  15  of  Legislative  Article  II  of  1890  is 
amended  in  the  following  manner : 

.  .  .  For  amended  Art.  15,  see  corresponding  Art.  15  in 
Law  of  1890.  .  .  . 

ART.  2.  Industrial  associations  possessing  civil  capacity 
(therein  comprised  the  Public  Treasury  in  the  manifestations 
of  its  industrial  activity  and  other  legal  persons  in  accordance 
with  public  law)  may,  even  if  they  are  not  proprietors  of  an 
establishment  in  which  they  fabricate  or  place  on  sale  merchan- 
dise, deposit  for  registration  marks  of  which  their  members  may 
make  use  for  the  designation  of  their  own  products  (collective 
marks). 

The  collective  mark  is  governed,  under  reservations  of  the 
modifications  below  indicated,  by  the  legal  dispositions  applica- 
ble to  ordinary  marks. 

ART.  3.  The  by-laws  (or  the  deed  of  association)  of  the 
association  that  deposits  the  collective  mark  shall  be  presented 
at  the  Patent  Office  and  to  the  Chamber  of  Commerce  and  In- 
dustry having  jurisdiction.  The  by-laws  shall  indicate:  the 
name,  the  seat,  and  the  purpose  of  the  association,  the  organs 
that  represent  it ;  and  they  shall  designate  those  that  may  make 
use  of  the  mark,  as  well  as  the  conditions  of  this  usage.  They 
shall  enumerate  the  motives  for  which  the  use  of  the  mark  may 
be  prohibited  to  a  member  of  the  association,  as  well  as  the 
rights  and  duties  of  those  interested  in  case  of  violation  of  the 
mark.  Subsequent  modifications  of  the  by-laws  shall  likewise 
be  brought  to  the  attention  of  the  Patent  Office  and  to  the  Cham 
ber  of  Commerce  and  Industry.  These  by-laws  shall  be  com- 


HUNGARY  453 

municated  to  any  person  that  shall  demand  such. 

If  the  collective  mark  is  generally  known  as  the  designation 
of  merchandise  in  the  trade  circles  that  form  part  of  the  asso- 
ciation, it  may  not  be  refused  under  the  pretext  that  it  consti- 
tutes a  free  mark  (Sec.  3,  paragraph  3,  of  Legislative  Article  II 
of  1890). 

The  fee  for  the  deposit  and  registration  of  the  collective 
mark  is  raised  five-fold  as  respects  that  fixed  in  the  first  section. 

In  the  Register  the  collective  mark  shall  be  particularly 
designated  as  such. 

ART.  4.  The  right  of  depositing  a  collective  mark  and  of 
obtaining  registration  therefor  is  not  assignable. 

ART.  5.  The  collective  mark  shall  be  cancelled,  on  petition 
of  any  person,  not  only  in  the  case  foreseen  in  Sees.  21  of  Legis- 
lative Article  II  of  1890,  and  3  and  4  of  Legislative  Article  XLI 
of  1895,  but  also  when  the  association  shall  cease  to  exist  or 
when  it  shall  have  tolerated  the  unauthorized  use  of  the  collec- 
tive mark. 

The  collective  mark  may  not  be  cancelled  for  the  simple 
reason  that  the  enterprise  has  ceased  to  be  exploited. 

ART.  6.  Rights  determined  during  the  course  of  procedure 
brought  for  illicit  use  of  the  collective  mark  shall  also  embrace 
reparation  for  damages  caused  to  the  different  members  of  the 
association. 

ART.  7.  Sees.  8  and  9  of  Legislative  Article  XLI  of  1895 
are  abrogated  and  replaced  by  the  following  provisions: 

Whoever,  knowingly,  introduces  into  commerce  or  offers 
for  sale  products  improperly  provided  with  a  mark  to  the  use 
of  which  a  third  party  has  the  exclusive  right,  and  whoever, 
knowingly,  counterfeits  a  mark  to  this  effect,  renders  himself 
culpable — provided  that  his  act  does  not  fall  under  a  more  severe 
penal  provision — of  an  offence  and  shall  be  amenable  to  im- 
prisonment for  as  much  as  six  months  and  a  fine  of  from  five 
hundred  to  twenty  thousand  kroner. 

If  the  fine  inflicted  by  way  of  accessory  punishment  is  not 
recoverable,  the  physical  restraint  that  shall  be  substituted 
therefor  may  not  exceed  the  term  of  one  year. 

The  dispositions  of  the  paragraphs  that  precede  are  like- 
wise applicable  to  those  that  knowingly  introduce  in  commerce 
or  place  on  sale  products  improperly  provided  with  the  name, 
the  commercial  firm,  arms,  or  the  commercial  denomination  of 
the  establishment  of  a  producer,  of  an  industrial,  or  of  a  mer 
chant  of  the  country;  they  shall  apply  also  to  him  that  know- 
ingly shall  prepare  for  such  purpose  the  denominations  above- 
mentioned. 


454  HUNGAEY 

ART.  8.  The  crimes  defined  in  Sec.  7  of  the  present  law 
are  within  the  jurisdiction  of  the  Tribunals  of  the  Arrondisse- 
ment. 

ART.  9.  The  Minister  of  Commerce  and  the  Minister  of 
Justice  are  charged  with  the  execution  of  the  present  law  after 
order  rendered  by  the  Minister  of  Commerce. 


ICELAND 

LAW  OF  NOVEMBER  13,  1903 

SECTION  1.  Every  person  who  in  this  country  carries  on 
manufacturing  or  handcraft,  agriculture,  mining,  commerce  or 
other  business  may,  besides  his  right  to  use  as  trade  mark  his 
name  or  firm  or  the  name  of  real  estate  belonging  to  him,  by 
registration  in  conformity  with  the  rules  contained  in  the  present 
Statute,  acquire  exclusive  right  to  use  special  trade  marks  in 
order  to  distinguish  his  goods  from  those  of  other  parties  in 
the  open  market.  This  right  will  comprise  all  kinds  of  goods, 
unless  it  has  been  restricted,  at  the  registration,  to  certain 
kinds  of  goods. 

The  trade  mark  is  to  be  placed  on  the  article  itself  or  its 
wrapping. 

SEC.  2.  The  Register  of  Trade  Marks  shall  be  kept  for  the 
entire  country  at  Reykjavik  by  a  Registrar  appointed  for  this 
purpose  by  the  Governor,  the  salary  and  office  expenses  of  the 
said  Registrar  being  fixed  for  the  period  from  the  date  when 
this  Statute  shall  enter  into  force  until  December  31,  1905,  by 
the  Minister  for  Iceland,  and  shall  be  voted  for  the  following 
period  on  the  budget. 

SEC.  3.  Any  person  desiring  to  have  a  trade  mark  regis- 
tered shall  hand  to  the  Registrar  or  send  by  mail,  postage  paid, 
an  application  containing  a  clear  description  of  the  mark  and 
full  information  about  the  applicant's  name  or  firm,  trade  and 
postal  address,  and,  in  case  the  right  to  the  trade  mark  is  to 
comprise  only  certain  kinds  of  goods,  an  indication  of  these 
kinds  of  goods. 

The  application  should  be  accompanied  by: 

1)  A  facsimile  of  the  mark  on  durable  paper  in  triplicate 
not  more  than  10  centimeters  (3.937  in.)  high  and  15  centime- 
ters (5.906  in.)  wide; 

2)  Two  printing  blocks    (cliches)    of  the   same  size  and 
adapted  to  print  the  mark; 

3)  Forty  Kroner  as  fee  for  the  registration  and  the  pub- 
lication of  the  same. 

As  soon  as  possible,  the  Registrar  should  deliver  or  send 
to  the  applicant  .a  written  acknowledgment  of  the  application 
having  been  received,  and  the  date  and  hour  of  the  same.  A 
copy  of  the  trade  mark  is  to  be  attached  to  the  acknowledgment. 

SEC.  4.    If  any  person,  at  the  time  when  the  present  Statute 


456  ICELAND 

is  promulgated,  already  uses  certain  marks  to  be  affixed  to  his 
goods  or  the  wrapping  of  the  same,  no  other  person  may  acquire, 
by  making  an  application,  the  right  to  use  those  marks,  pro- 
vided that  the  first  mentioned  person,  within  fourteen  days  after 
the  Statute  has  entered  into  force,  applies  for  the  marks  used  by 
him,  in  the  manner  prescribed  in  Sec.  3. 

SEC.  5.    The  trade  mark  must  not  be  registered : 

1)  When  it  consists  solely  in  numerals,  letters  or  words 
that  are  not  of  such  prominent  distinguishing  form  that  the 
mark  may  be  considered  to  be  a  figure-mark.    Registration  must 
not  be  refused,  however,  when  the  mark  consists  of  words  that 
are  a  specially  invented  denomination  for  certain  kinds  of  goods, 
specified  in  the  application  in  conformity  with  Sec.   3,  and 
whereby  it  is  not  the  object  to  indicate  the  origin,  quality,  pur- 
pose, quantity  or  price  of  the  article; 

2)  When  it  contains,  without  authorization,  another  name 
or  another  firm  than  that  of  the  applicant,  or  the  name  of  the 
real  estate  of  some  other  party; 

3)  When  it  contains  public  marks,  such  as  coats-of-arms ; 

4)  When  it  contains  representations  likely  to  give  offence ; 

5)  When  it  is  perfectly  similar  to  a  trade  mark  that  has 
already  been  registered  for  some  other  person  or  whose  regis- 
tration has  been  duly  applied  for,  or  which  offers  such  simi- 
larity to  the  same  that  the  marks  in  their  entirety,  notwith- 
standing the  difference  in  details,  may  easily  be  mistaken  for 
one  another.    Registration  must  not  be  refused,  however,  when 
the  similarity  consists  in  such  denominations  as  are  referred  to 
in  Sec.  8,  or  when  the  marks  relate  to  different  kinds  of  goods. 

SEC.  6.  If  the  registration  is  refused,  a  notification  thereof 
and  the  reason  for  the  refusal  are  to  be  communicated  to  the 
applicant  in  writing,  in  conformity  with  Sec.  3. 

If  the  applicant  considers  the  decision  to  be  unfounded,  he 
may,  within  three  months  thereafter,  appeal  the  decision  of  the 
Registrar  to  the  Governor,  his  privilege  to  have  the  question 
settled  by  the  Courts,  however,  being  not  thereby  restricted. 

SEC.  7.  When  the  registration  has  taken  place,  publication 
thereof  must  be  effected  as  soon  as  possible  in  the  newspaper 
authorized  in  Iceland  to  print  official  publications,  there  being 
besides,  at  the  end  of  each  year,  published  in  the  Government 
Gazette,  Part  B,  a  notification  concerning  the  registrations  ef- 
fected during  the  course  of  the  year. 

SEC.  8.  If  a  registered  trade  mark  contains  numerals, 
letters  or  words  that  cannot,  in  consequence  of  Sec.  5,  be  regis- 
tered separately,  or  if  it  consists  wholly  or  in  part  of  such  signs 
or  marks  as  are  commonly  used  in  certain  classes  of  trades, 


ICELAND  457 

other  parties  will  not  thereby  be  prevented  from  using  the  same 
signs  as  a  trade  mark  or  part  of  the  same. 

SEC.  9.  The  right  to  a  registered  trade  mark  may  only  be 
assigned  in  connection  with  the  business  for  which  it  is  used. 

If  any  person  assigns  his  business,  his  right  to  the  regis- 
tered trade  mark  used  in  the  business  is  transferred  to  the 
buyer,  unless  agreement  has  been  made  to  the  effect  that  the 
assignor  is  to  retain  the  trade  mark  right,  or  that  both  parties 
may  use  the  mark  for  different  kinds  of  goods. 

SEC.  10.  Protection  of  a  registered  trade  mark  shall  cease 
when  application  for  renewal  has  not  been  filed,  the  first  time 
within  ten  years  after  the  day  of  registration,  and  thereafter 
within  ten  years  from  the  last  renewal.  Not  less  than  four 
months  before  the  expiration  of  the  said  time  limits,  the  Regis- 
trar should  notify  the  person  for  whom  the  mark  is  registered, 
or  his  attorney  (Sec.  15),  by  registered  letter  mailed  to  the 
address  in  this  country  given  by  the  person  concerned,  that  the 
protection  of  the  trade  mark  will  cease,  owing  to  lack  of  timely 
renewed  application. 

If  any  person  shall  desire  to  renew  the  registration,  he 
must  file  or  submit  a  written  application  worded  in  conformity 
with  Sec.  3,  accompanied  by  such  facsimile  as  is  prescribed,  and 
10  Kroner,  as  registration  fee  for  the  Exchequer.  If  the  mark 
has  been  registered  for  some  person  other  than  the  one  apply- 
ing for  the  renewal,  the  applicant's  right  to  the  mark  is  also  to 
be  proven.  The  renewal  is  to  be  entered,  as  soon  as  possible, 
in  the  Register,  and  a  similar  acknowledgment,  as  prescribed 
in  Sec.  3,  concerning  application  for  a  new  mark,  is  to  be  given 
to  the  applicant. 

If  the  Registrar  deems  the  application  to  be  defective  in 
some  respect,  he  must  refuse  the  renewal.  In  respect  to  the 
refusal  made  and  complaint  regarding  the  same,  the  stipula- 
tions in  Sec.  6  shall  apply. 

SEC.  11.  If  the  Governor  finds  that  according  to  the  rules 
in  Sec.  5,  Nos.  3  or  4,  a  trade  mark  ought  not  to  have  been 
registered,  he  shall  order  the  registration  to  be  cancelled,  but 
the  justification  for  such  order  may  be  brought  before  the  courts 
for  adjudication. 

If  registration  has  been  made  of  a  trade  mark  consisting 
solely  of  signs  or  marks  commonly  used  in  certain  classes  of 
trade,  cancellation  thereof  may  be  demanded  by  any  person 
carrying  on  such  business.  Both  in  this  case  and  otherwise,  if 
any  person  considers  the  registration  of  a  trade  mark  to  be 
detrimental  to  him,  the  question  relative  to  the  cancellation  of 
the  registration  shall  be  subject  to  decision  by  the  courts. 


458  ICELAND 

If  registration  has  been  refused  according  to  Sec.  5,  No.  5, 
and  the  applicant  shall  prove,  during  a  lawsuit  against  the  pos- 
sessor of  the  trade  mark  previously  applied  for  or  previously 
registered,  that  this  is  a  mark  originally  used  by  him  which  the 
other  party  has  appropriated,  he  may  be  found  entitled  by 
judgment  to  have  the  trade  mark  registered  with  the  exclusive 
right  to  use  the  same  which  he  might  have  claimed,  when  it  was 
applied  for  by  the  other  party,  in  case  he  brings  suit  concern- 
ing the  same  within  a  year  after  publication  of  the  registration 
of  the  mark  has  been  effected  in  the  newspaper  authorized  in 
Iceland  to  print  official  publications. 

SEC.  12.  When  registration  of  a  trade  mark  has  been  de- 
clared to  be  cancelled,  or  the  protection  of  a  registered  trade 
mark  has  ceased,  or  when  the  person  entitled  to  the  mark  so 
petitions,  the  mark  shall  be  cancelled  from  the  Register,  and 
publication  thereof  is  to  be  effected  both  in  the  newspaper  au- 
thorized in  Iceland  to  print  official  publications  and,  at  the  end 
of  the  year,  in  the  Government  Gazette,  Part  B,  in  connection 
with  the  publication  concerning  the  registrations  effected  dur- 
ing the  course  of  the  year,  as  mentioned  in  Sec.  7. 

SEC.  13.  Any  person  placing  upon  goods  for  sale  or  on 
the  wrapping  thereof,  without  authorization,  some  other  per- 
son's name  or  firm  or  the  name  of  another  person's  real  estate 
or  another  person's  registered  trade  mark,  as  well  as  any  per- 
son offering  for  sale  the  goods  marked  in  such  manner,  may, 
after  lawsuit  has  been  instituted  on  the  part  of  the  injured 
party,  be  sentenced  to  be  without  title  to  use  the  mark  or  to 
offer  for  sale  the  goods  marked  with  the  same.  If  he  has  had 
knowledge  regarding  the  other  person's  better  title,  he  shall  be 
punished  by  fines  of  from  100  to  2000  Kroner,  but  in  case  of 
repetition  the  penalty  may  be  increased  to  imprisonment  and, 
in  addition,  he  may  be  bound  to  make  good  the  damage  done 
and  to  remove  the  unlawfully  applied  marks,  or,  if  necessary, 
to  destroy  the  goods  or  their  wrappings,  provided  that  they 
are  still  in  his  possession  or  otherwise  are  at  his  disposal. 

SEC.  14.  The  stipulations  in  Sec.  13  shall  also  apply  when 
some  other  person's  name  or  firm  or  the  name  of  some  other 
person's  real  estate  or  the  registered  trade  mark  of  some  other 
person  are  reproduced  with  such  slight  modifications  that  the 
names  or  the  marks  in  their  entirety,  notwithstanding  the  dif- 
ference in  details,  may  easily  be  mistaken  for  one  another. 

SEC.  15.  By  Eoyal  Ordinance  it  may  be  ordained,  pro- 
vided that  reciprocity  is  secured,  that  the  protection  secured  by 
this  Statute  shall  also  be  extended  to  persons  carrying  on,  with- 
out the  country,  such  lines  of  trade  as  referred  to  in  Sec.  1.  In 


ICELAND  459 

such  case  the  stipulations  of  the  Statute  shall  apply,  but  the 
following  special  rules  will  have  to  be  followed  in  respect  to 
the  trade  marks  being  registered: 

1.  The  application  is  to  be  accompanied  by  evidence  show- 
ing that  the  applicant  has  fulfilled  the  conditions  required,  in 
the  other  country  concerned,  in  order  to  acquire  protection  for 
the  trade  mark; 

2.  In  all  cases  relating  to  the  trade  mark,  the  applicant 
must  acknowledge  the  Court  of  Reykjavik  Township  as  his 
venue,  and  he  must  name  an  attorney  residing  in  this  country 
who  may  accept  lawsuits  in  his  behalf; 

3.  The  trade  mark  shall  not  be  protected  to  any  further 
extent  nor  for  any  longer  time  than  in  the  other  country. 

In  respect  to  trade  marks  that  are  registered  in  a  country 
making  corresponding  concessions  in  case  of  Icelandic  trade 
marks,  the  following  further  rules  may  be  stipulated  by  Royal 
Ordinance : 

4.  The  trade  mark  shall  be  registered,  provided  that  it  is 
not  contrary  to  moral  or  public  order,  in  the  shape  in  which 
it  is  valid  in  the  other  country  concerned. 

5.  If  any  person,  not  later  than  four  months  after  the 
trade  mark  has  been  applied  for  in  the  other  country  concerned, 
makes  application  for  its  registration  in  this  country,  then  such 
application,  with  relation  to  other  applications,  is  to  be  con- 
sidered to  be  filed  simultaneously  with  the.  application  in  the 
other  country. 

6.'  If  the  application  is  refused  by  reason  of  Sec.  5,  No.  5, 
and  the  applicant,  during  a  lawsuit  against  the  possessor  of  the 
mark  previously  applied  for  or  registered,  proves  that  this 
originally  is  a  mark  used  by  him  which  the  other  person  has 
appropriated,  then  he  may  be  declared,  by  judgment,  to  be  en- 
titled to  have  the  mark  registered,  with  exclusive  right  to  use 
the  same  for  the  kind  of  goods  for  which  he  used  the  mark  when 
the  reciprocal  protection  entered  into  force,  provided  that  he 
institutes  suit  regarding  the  same  within  six  months  after  the 
reciprocal  protection  entered  into  force.  This  does  not  con- 
stitute any  restriction,  however,  as  regards  the  right  guaran- 
teed by  Sec.  11,  paragraph  3. 

SEC.  16.  The  detailed  rules  concerning  the  arrangement, 
form  and  routine  of  the  Trade  Mark  Register,  with  reference  to 
the  publications  referred  to  in  this  Statute,  as  well  as  regarding 
the  accounting  for  the  fees  due  to  the  Exchequer  in  consequence 
of  this  Statute,  will  be  fixed  by  the  Governor. 

SEC.  17.  Lawsuits  instituted  on  the  basis  of  Sec.  13,  para- 
graph 2,  of  this  Statute  are  to  be  dealt  with  as  public  police- 


460  ICELAND 

cases,  and  complaint  shall  be  made  only  in  case  some  person 
injured  by  the  transgression  of  the  Statute  so  petitions. 

SEC.  18.  Any  person  may  obtain  information  from  the 
Register,  either  by  inspection  of  the  same  or  by  transcripts,  in 
which,  however,  no  demand  may  be  made  for  the  reproduction 
of  the  facsimiles  themselves. 

For  a  transcript  from  the  Register  or  from  an  original 
application  a  fee  of  2  Kroner  shall  be  paid  to  the  Exchequer. 
For  inspection  of  the  Register  no  fee  is  to  be  paid. 

SEC.  19.  This  Statute  shall  become  of  effect  April  1,  1904. 
All  persons  concerned  will  be  governed  by  these  presents. 


DECREE  MAKING  THE  LAW  OF  NOVEMBER  13,  1903, 

COVERING  THE  PROTECTION  OF  TRADE 

MARKS,  APPLICABLE  TO  THE  UNITED 

STATES  OF  AMERICA 

We  Christian  the  Tenth,  by  the  Grace  of  God,  King  of  Den- 
mark, etc.,  etc.,  etc.,  hereby  make  known :  that  inasmuch  as  the 
protection  of  trade  marks  in  the  United  States  of  America  has 
been  made  available — to  the  same  extent  as  to  her  own  citizens 
— to  all  such  parties  in  Iceland  as  are  operating  any  factory, 
industrial  undertaking,  agriculture,  mining,  commerce  or  any 
other  trade,  we  desire  by  virtue  of  the  law  of  November  13, 1903, 
paragraph  15,  to  issue  the  following  order: 

The  protection  of  trade  marks,  provided  by  law  of  Novem- 
ber 13, 1903,  shall  also  be  extended  to  such  parties  in  the  United 
States  of  America  as  are  operating  any  factory  or  industrial 
undertaking,  agriculture,  mining,  commerce  or  any  other  trade 
upon  the  following  conditions : 

1)  The  application  should  be  accompanied  by  a  statement 
furnishing  evidence  that  the  applicant  has  fulfilled  the  condi- 
tions which  are  to  be  observed  in  the  United  States  of  America 
in  order  to  obtain  the  said  protection. 

2)  The  applicant  should  adopt  the  "  Reykjavik  By  ting"  as 
venue  in  all  matters  concerning  the  trade  mark,  in  addition  to 
which  he  should  appoint  an  attorney  who  should  represent  him 
in  lawsuits. 

3)  The  scope  of  the  protection  of  this  trade  mark  shall  ex- 
tend no  further  and  will  be  valid  no  longer  than  is  the  custom 
in  the  United  States  of  America. 

4)  The  trade  mark  shall  be  registered  in  the  shape  in  which 
it  is  registered  in  the  United  States,  provided  its  character  is 
not  in  violation  of  morals  or  public  justice. 

5)  If  the  application  for  the  registration  of  a  trade  mark 
is  made  in  Iceland  within  four  months  after  the  date  upon  which 


ICELAND  461 

it  was  applied  for  in  the  United  States  of  America,  such  an 
application  shall,  in  comparison  to  other  applications,  be  re- 
garded as  having  been  applied  for  simultaneously  with  the  one 
made  in  the  United  States. 

6)  If  the  registration  of  a  trade  mark  is  refused  in  accord- 
ance with  paragraph  5,  No.  5,  and  the  applicant  proves,  through 
the  medium  of  proceeding  against  the  party  who  has  registered 
the  trade  mark,  that  the  said  mark  was  originally  used  by  him 
and  that  the  same  has  been  adopted  by  the  other  party,  he  may 
be  entitled,  through  the  decision  of  the  court,  to  have  the  mark 
registered  with  sole  right  of  use  for  the  kind  of  goods,  in  con- 
nection with  which  the  mark  was  used  when  the  mutual  protec- 
tion became  effective,  provided  he  brings  action  against  the 
other  party  within  six  months  from  the  date  on  which  the  mu- 
tual protection  became  effective.  In  this  connection,  however, 
no  restriction  is  made  with  respect  to  the  right  granted  in  para- 
graph 11,  section  3. 

This  decree  becomes  effective  immediately. 

This  should  be  observed  by  all  parties  concerned. 

Given  at  Amalienborg,  April  16,  1918. 


INDIA 

No  trade  mark  law.  Marks  may  be  placed  on  record,  how- 
ever, in  the  Office  for  Registration  of  Deeds  under  the  Indian 
Eegistration  Act,  1877,  Act  III  of  1877.  This  registration  has 
no  legal  effect  other  than  that  it  may  be  received  as  evidence 
of  proprietorship  and  of  use. 

Indian  Merchandise  Marks  Act,  1889,  Act  IV  of  1889,  sub- 
stantially like  Merchandise  Marks  Act  of  Great  Britain,  which 
see. 


ITALY 

LAW  NO.  4577  OF  AUGUST  30,  1868 

ARTICLE  1.  Whoever  shall  adopt  a  mark  or  other  sign  for 
distinguishing  the  products  of  his  industry,  the  merchandise 
of  his  commerce,  and  the  animals  of  a  breed  belonging  to  him, 
shall  have  the  exclusive  use  thereof  provided  that  he  effect  the 
deposit  prescribed  in  this  law. 

The  mark  or  distinctive  sign  must  be  different  from  those 
already  legally  used  by  other  persons,  and  it  must  indicate  the 
place  of  origin,  the  factory  and  the  line  of  business,  in  such  way 
as  to  evidence  the  name  of  the  person,  the  style  of  the  society 
and  the  denomination  of  the  establishment  from  which  emanate 
the  products  or  goods;  when  it  is  a  question  of  animals  and 
small  objects  there  shall  be  proposed  and  approved  a  special 
abbreviation  or  other  equivalent  sign. 

The  characteristic  signature  of  the  producer,  merchant,  or 
proprietor,  engraved  on  products,  or  reproduced  by  means  of 
a  stamp  or  any  other  durable  means,  or  even  written  by  hand, 
may  constitute  a  mark  or  distinctive  sign. 

ART.  2.  The  industrial  or  commercial  assign  or  successor 
that  shall  wish  to  preserve  the  mark  of  its  originator  shall  make 
immediate  declaration  thereof  on  stamped  paper  of  one  lira. 

ART.  3.  A  merchant  may  not  suppress  the  mark  or  dis- 
tinctive sign  of  the  producer  of  his  merchandise  without  the 
express  consent  of  the  latter ;  he  may,  however,  affix  separately 
his  own  mark  or  the  distinctive  sign  of  his  commerce. 

ART.  4.  Distinctive  marks  and  signs,  already  legally  used 
abroad  on  products  and  merchandise  of  foreign  manufacture 
and  commerce  that  is  being  carried  on  in  the  State,  or  on 
animals  of  foreign  breed  distributed  in  the  Kingdom,  shall  be 
acknowledged  and  guaranteed,  provided  that  there  be  observed, 
with  regard  to  such  marks  and  signs,  the  prescriptions  estab- 
lished for  nationals. 

ART.  5.  There  is  affirmed  the  general  prohibition  against 
usurpation  of  the  name  or  the  firm  of  a  society  or  of  an  indi- 
vidual, and  it  is  likewise  prohibited  to  avail  one's  self  of  the 
commercial  style  or  the  insignia  of  the  business,  the  charac- 
teristic emblem,  the  denomination  or  title  of  an  association  or 
of  a  corporate  body,  whether  it  be  foreign  or  national,  and  to 
affix  them  upon  shops,  on  objects  of  industry  or  of  commerce 
or  upon  designs,  engravings  or  other  objects  of  art :  even  when 


464  ITALY 

the  style,  insignia,  emblem,  denomination,  or  name,  before 
mentioned,  does  not  form  part  of  a  distinctive  mark  or  sign  or 
is  not  found  registered  in  conformity  with  the  present  law. 

ABT.  6.  The  Financial  Administration  of  the  State  may 
adopt  marks  and  signs  in  order  to  assure  the  authenticity  of 
the  products  of  its  manufacture,  and  the  distribution  of  goods 
of  its  monopoly  by  conforming  itself  to  the  prescriptions  of  the 
present  law;  and  this  without  prejudice  to  provisions  in  force, 
as  regards  the  Administration  of  the  State,  in  the  law  that 
concerns  the  production  and  classification  of  such  products. 

ABT.  7.  Whoever  shall  wish  to  assure  to  himself  the  exclu- 
sive use  of  a  mark  or  distinctive  sign  in  the  sense  provided  for 
in  the  preceding  articles,  shall  file  with  one  of  the  Prefectures 
of  the  Kingdom: 

a)  Two  facsimiles  of  the  distinctive  mark  or  sign  that  he 
intends  to  adopt; 

b)  An  original  declaration  in  duplicate,  in  which,  there 
being  expressed  the  desire  to  reserve  to  himself  the  rights  that 
pertain  to  him,  shall  be  indicated  the  kind  of  goods  upon  which 
it  is  desired  to  affix  the  mark  or  sign,  it  being  noted  whether 
the  distinctive  mark  or  sign  is  to  be  affixed  to  goods  produced 
by  the  declarant  or  upon  merchandise  of  his  commerce ; 

c)  An  original  description  in  duplicate  of  the  distinctive 
mark  or  sign; 

d)  A  receipt  from  the  local  Public  Receiver,  from  which 
it  shall  appear  that  forty  lire  have  been  paid  by  way  of  fee  and 
expenses  for  each  distinctive  sign  or  mark. 

The  successors  or  assigns  shall  pay  a  fee  of  two  lire  for 
the  transcription  of  the  declaration  prescribed  in  Art.  2. 

ABT.  8.  Upon  the  acknowledgment  of  the  regularity  of  the 
extrinsic  part  of  the  documents  presented,  the  Office  of  the 
Prefecture  shall  enter,  upon  the  aforementioned  declaration, 
the  annotation  of  the  day  and  hour  at  which  they  were 
presented. 

The  Prefecture  shall  transmit  the  whole,  within  a  term  not 
exceeding  five  days,  to  the  Minister  of  Agriculture  and  Com- 
merce, who,  the  said  documents  having  been  entered  in  the 
Public  Register,  shall  deliver,  if  there  be  occasion  therefor, 
certificate  of  transcription. 

The  Minister,  when  the  formalities  are  fulfilled,  shall  trans- 
mit one  of  the  facsimiles  of  the  mark  or  distinctive  sign  to  the 
Prefecture,  to  the  end  that  it  be  preserved  either  by  the  latter 
or  by  a  Chamber  of  Commerce,  and  shall  be  held  at  the  disposal 
of  the  public  in  the  Province  in  which  the  concession  was 
initiated. 


ITALY  465 

ART.  9.  The  certificate  shall  not  guarantee  the  validity  or 
legality  of  the  distinctive  mark  or  sign,  or  the  quality  or  origin 
of  the  goods,  or  the  existence  of  the  other  conditions  required, 
to  the  end  that  the  certificate  be  valid  and  efficacious. 

ART.  10.  The  right  to  make  exclusive  use  of  a  distinctive 
mark  or  sign,  in  favor  of  the  declarant,  shall  commence  to  run 
from  the  date  of  the  annotation  made  by  the  Office  of  the  Pre- 
fecture. However,  for  the  effects  of  fines  and  damages,  there 
shall  be  immediately  published  in  the  Gazzetta  Ufficiale  the 
concession  of  the  certificate  of  ownership. 

ART.  11.  Civil  actions,  with  reference  to  the  ownership  of 
marks  and  other  distinctive  signs,  shall  be  lodged  in  the  Civil 
Tribunals,  and  the  case  shall  be  plead  and  adjudicated  in  sum- 
mary manner. 

Criminal  actions  shall  be  lodged  before  the  competent 
Tribunal.  Private  complaint  is  not  necessary  for  bringing 
penal  action. 

ART.  12.  He  shall  be  amenable  to  a  fine  of  not  exceeding 
two  thousand  (2000)  lire,  even  in  default  of  any  damage  to 
third  parties: 

1)  Who  shall  have  counterfeited  a  distinctive  mark  or  sign, 
or  who  shall  have  made  use  thereof  knowingly; 

2)  Who  shall  knowingly  have  put  in  circulation,  sold  or 
introduced  from  abroad,  and  for  commercial  uses,  goods  with 
counterfeit  marks  or  signs; 

3)  Who  shall  have  contravened  the  disposition  of  Arts. 
3,  5  and  6  of  the  present  law; 

4)  Who,  without  having  precisely  counterfeited  a  distinc- 
tive mark  or  sign,  shall  have  made  a  fraudulent  imitation  there- 
of, or  who  shall  have  made  use  knowingly  of  a  mark  or  sign 
fraudulently  imitated; 

5)  Who  shall  knowingly  have  put  in  circulation,  sold  or 
introduced  from  abroad,  and  for  commercial  uses,  goods  with 
marks  or  signs  fraudulently  imitated; 

6)  Who  shall  have  made  use  knowingly  of  a  mark  or  sign, 
insignia  or  emblem  bearing  indication  possible  of  deceiving 
buyers  as  to  the  nature  of  the  products,  or  who  shall  have  sold 
products  bearing  such  marks  or  signs  or  emblems. 

In  case  of  repetition,  the  fine  shall  not  be  in  excess  of  four 
thousand  (4000)  lire. 

Counterfeit  marks  or  signs,  the  instruments  that  have 
served  in  the  fraud,  as  well  as  the  goods  and  objects  denounced 
with  such  counterfeiting,  shall  be  confiscated. 

Marks  or  signs,  insignia  or  emblems,  that  are  altered  shall 
be  redintegrated  at  the  expense  of  the  delinquent. 


466  ITALY 

These  penalties  shall  be  applicable  without  prejudice  to 
damages  and  injuries  and  to  those  greater  penalties  that  are 
established  by  the  Code  of  Penal  Procedure  in  cases  of 
falsification. 

ART.  13.  Any  law  or  decree  contrary  to  the  present  pro- 
visions, effective  even  in  the  Venetian  and  Mantua  provinces, 
is  abrogated. 

ART.  14.  A  regulation  approved  by  Royal  Decree  shall 
provide  more  particularly  for  special  rules  for  the  summary 
publication  of  certificates  delivered  by  the  Government,  and  for 
whatever  may  be  requisite  for  the  publication  of  the  pres- 
ent law. 


JAMAICA 

LAW  37  OF  [MAY  23]  1911 

Short  Title 

1.  This  Law  may  be  cited  as  the  Trade  Marks  Law,  1911. 

Commencement  of  Act 

2.  This  Law  shall  come  into  operation  on  the  first  day  of 
March  one  thousand  nine  hundred  and  twelve. 

DEFINITIONS 

3.  In  and  for  the  purposes  of  this  Law  (unless  the  con- 
text otherwise  requires) : 

A  "mark"  shall  include  a  device,  brand,  heading,  label, 
ticket,  name,  signature,  word,  letter,  numeral,  or  any  combina- 
tion thereof. 

A  "trade  mark"  shall  mean  a  mark  used  or  proposed  to 
be  used  upon  or  in  connection  with  goods  for  the  purpose  of 
indicating  that  they  are  the  goods  of  the  proprietor  of  such 
trade  mark  by  virtue  of  manufacture,  selection,  certification, 
dealing  with,  or  offering  for  sale. 

A  "registrable  trade  mark"  shall  mean  a  trade  mark  which 
is  capable  of  registration  under  the  provisions  of  this  Law. 

"The  register"  shall  mean  the  register  of  trade  marks 
kept  under  the  provisions  of  this  Law. 

A  "registered  trade  mark"  shall  mean  a  trade  mark  which 
is  actually  upon  the  register. 

"Prescribed"  shall  mean,  in  relation  to  proceedings  before 
the  Court,  prescribed  by  Rules  of  Court,  (which  Rules  the  Chief 
Justice  with  the  concurrence  of  the  Puisne  Judge  is  hereby 
empowered  to  make)  and  in  other  cases,  prescribed  by  this  Law 
or  the  Rules  thereunder. 

"The  Court"  shall  mean  the  Supreme  Court  of  Judicature 
of  Jamaica. 

REGISTER  OF  TRADE  MARKS 

4.  There  shall  be  kept  at  the  General  Register  Office  for 
the  purposes  of  this  Law  a  book  called  the  Register  of  Trade 
Marks,  wherein  shall  be  entered  all  registered  trade  marks 
with  the  names  and  addresses  of  their  proprietors,  notifications 
of  assignment  and  transmissions,  disclaimers,  conditions,  lim- 
itations, and  such  other  matters  relating  to  such  trade  marks 
as  may  from  time  to  time  be  prescribed.    The  register  shall  be 
kept  under  the  control  and  management  of  the  Registrar  Gen- 
eral, who  is  in  this  Law  referred  to  as  the  Registrar. 


468  JAMAICA 

Trust  Not  to  Be  Entered  On  Register 

5.  There  shall  not  be  entered  in  the  register  any  notice 
of  any  trust  expressed,  implied,  or  constructive,  nor  shall  any 
such  notice  be  receivable  by  the  Registrar. 

Incorporation  of  Existing  Register 

6.  The  register  of  trade  marks  existing  at  the  date  of  the 
commencement  of  this  Law  and  all  registers  of  trade  marks 
kept  under  previous  Laws,  which  are  deemed  part  of  the  same 
book  as  such  register,  shall  be  incorporated  with  and  form  part 
of  the  register.    Subject  to  the  provisions  of  sections  thirty- 
seven  and  forty-two  of  this  Law  the  validity  of  the  original 
entry  of  any  trade  mark  upon  the  registers  so  incorporated 
shall  be  determined  in  accordance  with  the  laws  in  force  at  the 
date  of  such  entry,  and  such  trade  mark  shall  retain  its  original 
date,  but  for  all  other  purposes  it  shall  be  deemed  to  be  a  trade 
mark  registered  under  this  Law. 

Inspection  of  and  Extract  from  Register 

7.  The  register  kept  under  this  Law  shall  at  all  con- 
venient times  be  open  to  the  inspection  of  the  public,  subject 
to  such  regulations  and  payment  of  such  fees  as  may  be  pre- 
scribed ;  and  certified  copies,  sealed  with  the  seal  of  the  General 
Register  Office,  of  any  entry  in  any  such  register  shall  be  given 
to  any  person  requiring  the  same  on  payment  of  the  pre- 
scribed fee. 

REGISTEABLE  TRADE  MARKS 
Trade  Mark  Must  Be  for  Particular  Goods 

8.  A  trade  mark  must  be  registered  in  respect  of  particu- 
lar goods  or  classes  of  goods. 

RegistraNe  Trade  Marks 

9.  A  registrable  trade  mark  must  contain  or  consist  of  at 
least  one  of  the  following  essential  particulars: 

(1)  The  name  of  a  company,  individual,  or  firm  repre- 
sented in  a  special  or  particular  manner; 

(2)  The  signature  of  the  applicant  for  registration  or 
some  predecessor  in  his  business; 

(3)  An  invented  word  or  invented  words; 

(4)  A  word  or  words  having  no  direct  reference  to  the 
character  or  quality  of  the  goods,  and  not  being  according  to 
its  ordinary  signification  a  geographical  name  or  a  surname; 

(5)  Any  other  distinctive  mark,  but  a  name,  signature  or 
word  or  words,  other  than  such  as  fall  within  the  descriptions 
in  the  above  paragraphs  (1),  (2),  (3),  and  (4),  shall  not,  except 
by  order  of  the  Court,  be  deemed  a  distinctive  mark : 

Provided  always  that  any  special  or  distinctive  word  or 


JAMAICA  469 

words,  letter,  numeral,  or  combination  of  letters  or  numerals 
used  as  a  trade  mark  by  the  applicant  or  his  predecessors  in 
business  before  the  first  day  of  April,  one  thousand  eight  hun- 
dred and  eighty-nine,  which  has  continued  to  be  used  (either  in 
its  original  form  or  with  additions  or  alterations  not  substan- 
tially affecting  the  identity  of  the  same)  down  to  the  date  of 
the  application  for  registration  shall  be  registrable  as  a  trade 
mark  under  this  Law. 

For  the  purposes  of  this  section  "  distinctive "  shall  mean 
adapted  to  distinguish  the  goods  of  the  proprietor  of  the  trade 
mark  from  those  of  other  persons. 

In  determining  whether  a  trade  mark  is  so  adapted,  the 
tribunal  may,  in  the  case  of  a  trade  mark  in  actual  use,  take 
into  consideration  the  extent  to  which  such  user  has  rendered 
such  trade  mark  in  fact  distinctive  for  the  goods  with  respect 
to  which  it  is  registered  or  proposed  to  be  registered. 
Coloured  Trade  Marks 

10.  A  trade  mark  may  be  limited  in  whole  or  in  part  to 
one  or  more  specified  colours,  and  in  such  case  the  fact  that 
it  is  so  limited  shall  be  taken  into  consideration  by  any  tribunal 
having  to  decide  on  the  distinctive  character  of  such  trade  mark. 
If  and  so  far  as  a  trade  mark  is  registered  without  limitation 
of  colour  it  shall  be  deemed  to  be  registered  for  all  colours. 

Restriction  on  Registration 

11.  It  shall  not  be  lawful  to  register  as  a  trade  mark  or 
part  of  a  trade  mark  any  matter,  the  use  of  which  would  by 
reason  of  its  being  calculated  to  deceive  or  otherwise  be  dis- 
entitled to  protection  in  a  court  of  justice,  or  would  be  contrary 
to  law  or  morality,  or  any  scandalous  design. 

REGISTRATION  OP  TRADE  MARKS 
Application  for  Registration 

12.  (1)  Any  person  claiming  to  be  the  proprietor  of  a 
trade  mark  who  is  desirous  of  registering  the  same  must  apply 
in  writing  to  the  Registrar  in  the  prescribed  manner. 

(2)  Subject  to  the  provisions  of  this  Law  the  Registrar 
may  refuse  such  application,  or  may  accept  it  absolutely  or 
subject  to  conditions,  amendments,  or  modifications. 

(3)  In  case  of  any  such  refusal  or  conditional  acceptance 
the  Registrar  shall,  if  required  by  the  applicant,  state  in  writing 
the  grounds  of  his  decision  and  the  materials  used  by  him  in 
arriving  at  the  same,  and  such  decision  shall  be  subject  to 
appeal  to  the  Court. 

(4)  An  appeal  under  this  section  shall  be  made  in  the 
prescribed  manner,  and  on  such  appeal,  the  Court  shall,  if 


470  JAMAICA 

required,  hear  the  applicant  and  the  Registrar,  and  shall  make 
an  order  determining  whether,  and  subject  to  what  conditions, 
amendments,  or  modifications,  if  any,  the  application  is  to  be 
accepted. 

(5)  Appeals  under  this  section  shall  be  heard  on  the 
materials  so  stated  by  the  Registrar  to  have  been  used  by  him 
in  arriving  at  his  decision,  and  no  further  grounds  of  objection 
to  the  acceptance  of  the  application  shall  be  allowed  to  be  taken 
by  the  Registrar,  other  than  those  stated  by  him,  except  by 
leave  of  the  Court.    Where  any  further  grounds  of  objection 
are  taken  the  applicant  shall  be  entitled  to  withdraw  his  appli- 
cation without  payment  of  costs  on  giving  notice  as  prescribed. 

(6)  The  Registrar  or  the  Court,  as  the  case  may  be,  may 
at  any  time,  whether  before  or  after  acceptance,  correct  any 
error,  in  or  in  connection  with  the  application,  or  may  permit 
the  applicant  to  amend  his  application  upon  such  terms  as  they 
may  think  fit. 

Advertisement  of  Application 

13.  When  an  application  for  registration  of  a  trade  mark 
has  been  accepted,  whether  absolutely  or  subject  to  conditions, 
the  Registrar  shall,  as  soon  as  may  be  after  such  acceptance, 
cause  the  application  as  accepted  to  be  advertised  in  the  pre- 
scribed manner.     Such  advertisement  shall  set  forth  all  con- 
ditions subject  to  which  the  application  has  been  accepted. 

Opposition  to  Registration 

14.  (1)  Any  person  may,  within  the  prescribed  time  from 
the  date  of  the  advertisement  of  an  application  for  the  regis- 
tration of  a  trade  mark,  give  notice  to  the  Registrar  of  opposi- 
tion to  such  registration. 

(2)  Such  notice  shall  be  given  in  writing  in  the  prescribed 
manner,   and   shall   include   a   statement   of   the   grounds   of 
opposition. 

(3)  The  Registrar  shall  send  a  copy  of  such  notice  to  the 
applicant,  and  within  the  prescribed  time  after  the  receipt  of 
such  notice,  the  applicant  shall  send  to  the  Registrar,  in  the 
prescribed  manner,  a  counter-statement  of  the   grounds   on 
which  he  relies  for  his  application,  and,  if  he  does  not  do  so, 
he  shall  be  deemed  to  have  abandoned  his  application. 

(4)  If  the  applicant  sends   such  counter-statement,  the 
Registrar  shall  furnish  a  copy  thereof  to  the  persons  giving 
notice  of  opposition,  and  shall,  after  hearing  the  parties,  if  so 
required,  and  considering  the  evidence,  decide  whether,  and 
subject  to  what  conditions,  registration  is  to  be  permitted. 

(5)  The  decision  of  the  Registrar  shall  be  subject  to 


JAMAICA  471 

appeal  to  the  Court. 

(6)  An  appeal  under  this  section  shall  be  made  in  the 
prescribed  manner,  and  on  such  appeal  the  Court  shall,  if 
required,  hear  the  parties  and  the  Registrar,  and  shall  make 
an  order  determining  whether,  and  subject  to  what  conditions, 
if  any,  registration  is  to  be  permitted. 

(7)  On  the  hearing  of  any  such  appeal  any  party  may 
either  in  the  manner  prescribed  or  by  special  leave  of  the  Court 
bring  forward  further  material  for  the  consideration  of  the 
Court. 

(8)  In  proceedings  under  this  section  no  further  grounds 
of  objection  to  the  registration  of  a   trade  mark  shall   be 
allowed  to  be  taken  by  the  opponent  or  the  Registrar  other 
than  those  stated  by  the  opponent  as  here-in-above  provided 
except  by  leave  of  the  Court.    Where  any  further  grounds  of 
objection  are  taken  the  applicant  shall  be  entitled  to  withdraw 
his  application  without  payment  of  the  costs  of  the  opponent 
on  giving  notice  as  prescribed. 

(9)  In  any  appeal  under  this  section,  the  Court  may, 
after  hearing  the  Registrar,  permit  the  trade  mark  proposed 
to  be  registered  to  be  modified  in  any  manner  not  substantially 
affecting  the  identity  of  such  trade  mark,  but  in  such  case  the 
trade  mark  as  so  modified  shall  be  advertised  in  the  prescribed 
manner  before  being  registered. 

(10)  The  Registrar  shall  have  power  in  proceedings  under 
this  section  to  award  to  any  party  such  costs  as  he  may  con- 
sider reasonable,  and  to  direct  how  and  by  what  parties  they 
are  to  be  paid. 

(11)  If  a  party  giving  notice  of  opposition  or  of  appeal 
neither  resides  nor  carries  on  business  in  Jamaica,  the  tribunal 
may  require  such  party  to  give  security  for  costs  of  the  pro- 
ceedings before  it  relative  to  such  opposition  or  appeal,  and  in 
default  of  such  security  being  duly  given  may  treat  the  opposi- 
tion or  appeal  as  abandoned. 

Disclaimers 

15.  If  a  trade  mark  contains  parts  not  separately  regis- 
tered by  the  proprietor  as  trade  marks,  or  if  it  contains  matter 
common  to  the  trade  or  otherwise  of  a  non-distinctive  character, 
the  Registrar  or  the  Court,  in  deciding  whether  such  trade  mark 
shall  be  entered  or  shall  remain  upon  the  register,  may  require, 
as  a  condition  of  its  being  upon  the  register,  that  the  proprietor 
shall  disclaim  any  right  to  the  exclusive  use  of  any  part  or  parts 
of  such  trade  mark,  or  of  all  or  any  portion  of  such  matter,  to 
the  exclusive  use  of  which  they  hold  him  not  to  be  entitled,  or 
that  he  shall  make  such  other  disclaimer  as  they  may  consider 


472  JAMAICA 

needful  for  the  purpose  of  defining  his  rights  under  such  regis- 
tration: Provided  always  that  no  disclaimer  upon  the  register 
shall  affect  any  rights  of  the  proprietor  of  a  trade  mark  except 
such  as  arise  out  of  the  registration  of  the  trade  mark  in  respect 
of  which  the  disclaimer  is  made. 

Date  of  Registration 

16.  When  an  application  for  registration  of  a  trade  mark 
has  been  accepted  and  has  not  been  opposed,  and  the  time  for 
notice  of  opposition  has  expired,  or,  having  been  opposed,  the 
opposition  has  been  decided  in  favour  of  the  applicant,  the 
Registrar  shall  register  the  said  trade  mark,  and  the  trade 
mark,  when  registered,  shall  be  registered  as  of  the  date  of  the 
actual  receipt  of  the  application  for  registration,  and  such  date 
shall  be  deemed  for  the  purposes  of  this  Law  to  be  the  date  of 
registration. 

Certificate  of  Registration 

17.  On  the  registration  of  a  trade  mark  the  Registrar 
shall,  if  required,  issue  to  the  applicant  a  certificate  in  the  pre- 
scribed form  of  the  registration  of  such  trade  mark  under  the 
hand  of  the  Registrar,  and  sealed  with  the  seal  of  the  General 
Register  Office. 

Non-Completion  of  Registration 

18.  Where  registration  of  a  trade  mark  is  not  completed 
within  twelve  months  from  the  date  of  the  application  by  reason 
of  default  on  the  part  of  the  applicant,  the  Registrar  may, 
after  giving  notice  of  the  non-completion  to  the  applicant  in 
writing  in  the  prescribed  manner,  treat  the  application  as  aban- 
doned unless  it  is  completed  within  the  time  specified  in  that 
behalf  in  such  notice. 

Power  to  Register  Trade  Marks  Already  Registered 
in  England 

19.  The   proprietor   of   any   trade   mark   registered   or 
deemed  to  be  registered  in  England  under  the  "Trade  Marks 
Act,  1905"   (Imperial  Act  5  Edward  7,  c.  15.)  may,  if  such 
trade  mark  is  not  already  registered  or  deemed  to  be  registered 
under  this  Law  in  respect  of  the  same  goods  or  description  of 
goods  as  belonging  to  some  other  person,  apply  to  have  such 
trade  mark  registered  under  this  Law,  on  lodging  with  the 
Registrar  a  copy  purporting  to  be  duly  certified  and  to  be 
sealed  with  the  Seal  of  the  Patent  Office  of  the  entry  in  the 
Register  kept  under  the  said  Act  relating  to  such  trade  mark, 
including  a  copy  of  the  mark  and  disclaimers,  if  any.    It  shall 
not  be  necessary  to  advertise  any  such  application  and  the  Reg- 
istrar may  subject  to  an  appeal  to  the  Court  refuse  any  such 


JAMAICA  473 

application. 

If  such  trade  mark  is  already  registered  under  this  Law 
in  respect  of  the  same  goods  or  description  of  goods  in  the 
name  of  some  person  other  than  the  applicant,  the  Registrar 
shall  inform  such  applicant  of  the  name  and  address  of  the 
person  registered  as  aforesaid. 

IDENTICAL  TRADE  MARKS 

20.  Except  by  order  of  the  Court  or  in  the  case  of  trade 
marks  in  use  before  the  first  day  of  April  one  thousand  eight 
hundred  and  eighty  nine,  no  trade  mark  shall  be  registered  in 
respect  of  any  goods  or  description  of  goods  which  is  identical 
with  one  belonging  to  a  different  proprietor  which  is  already 
on  the  register  with  respect  to  such  goods  or  description  of 
goods,  or  so  nearly  resembling  such  a  trade  mark  as  to  be 
calculated  to  deceive. 

Rival  Claims  to  Identical  Marks 

21.  Where  each  of  several  persons  claims  to  be  proprietor 
of  the  same  trade  mark,  or  of  nearly  identical  trade  marks  in 
respect  of  the  same  goods  or  description  of  goods,  and  to  be 
registered  as  such  proprietor,  the  Registrar  may  refuse  to 
register  any  of  them  until  their  rights  have  been  determined 
by  the  Court,  or  have  been  settled  by  agreement  in  a  manner 
approved  by  him  or  (on  appeal)  by  the  Court. 

Concurrent  User 

22.  In  case  of  honest  concurrent  user  or  of  other  special 
circumstances  which,  in  the  opinion  of  the  Court,  make  it 
proper  so  to  do,  the  Court  may  permit  the  registration  of  the 
same  trade  mark,  or  of  nearly  identical  trade  marks,  for  the 
same  goods  or  description  of  goods  by  more  than  one  proprietor 
subject  to  such  conditions  and  limitations,  if  any,  as  to  mode 
or  place  of  user  or  otherwise,  as  it  may  think  it  right  to  impose. 

ASSIGNMENT 
Assignment  and  Transmission  of  Trade  Marks 

23.  A  trade  mark  when  registered  shall  be  assigned  and 
transmitted  only  in  connection  with  the  goodwill  of  the  busi- 
ness concerned  in  the  goods  for  which  it  has  been  registered 
and  shall  be  determinable  with  that  goodwill. 

Apportionment  of  Marks  on  Dissolution  of  Partnership 

24.  In  any  case  where  from  any  cause,  whether  by  reason 
of  dissolution  of  partnership  or  otherwise,  a  person  ceases  to 
carry  on  business,  and  the  goodwill  of  such  person  does  not 
pass  to  one  successor  but  is  divided,  the  Registrar  may  (sub- 
ject to  the  provisions  of  this  Law  as  to  associated  trade  marks), 
on  the  application  of  the  parties  interested,  permit  an  appor- 


474  JAMAICA 

tionment  of  the  registered  trade  marks  of  the  person  among 
the  persons  in  fact  continuing  the  business,  subject  to  such 
conditions  and  modifications,  if  any,  as  he  may  think  necessary 
in  the  public  interest.  Any  decision  of  the  Registrar  under 
this  section  shall  be  subject  to  appeal  to  the  Court. 

Associated  Trade  Marks 

25.  If  application  be  made  for  the  registration  of  a  trade 
mark  so  closely  resembling  a  trade  mark  of  the  applicant 
already  on  the  register  for  the  same  goods  or  description  of 
goods  as  to  be  calculated  to  deceive  or  cause  confusion  if  used 
by  a  person  other  than  the  applicant,  the  tribunal  hearing  the 
application  may  require  as  a  condition  of  registration  that  such 
trade  marks  shall  be  entered  on  the  register  as  associated 
trade  marks. 

Combined  Trade  Marks 

26.  If  the  proprietor  of  a  trade  mark  claims  to  be  entitled 
to  the  exclusive  use  of  any  portion  of  such  trade  mark  sepa- 
rately he  may  apply  to  register  the  same  as  separate  trade 
marks.    Each  such  separate  trade  mark  must  satisfy  all  the 
conditions  and  shall  have  all  the  incidents  of  an  independent 
trade  mark,  except  that  when  registered  it  and  the  trade  mark 
of  which  it  forms  a  part  shall  be  deemed  to  be  associated  trade 
marks  and  shall  be  entered  on  the  register  as  such,  but  the  user 
of  the  whole  trade  mark  shall  for  the  purposes  of  this  Law  be 
deemed  to  be  also  a  user  of  such  registered  trade  marks  belong- 
ing to  the  same  proprietor  as  it  contains. 

Series  of  Trade  Marks 

27.  When  a  person  claiming  to  be  the  proprietor  of  several 
trade  marks  for  the  same  description  of  goods  which,  while 
resembling  each  other  in  the  material  particulars  thereof,  yet 
differ  in  respect  of — 

(a)  statements  of  the  goods  for  which  they  are  respec- 
tively used  or  proposed  to  be  used ;  or 

(b)  statements  of  number,  price,  quality,  or  names  of 
places;  or 

(c)  other  matter  of  a  non-distinctive  character  which 
does  not  substantially  affect  the  identity  of  the  trade  mark;  or 

(d)  colour; 

seeks  to  register  such  trade  marks,  they  may  be  registered  as 
a  series  in  one  registration.  All  the  trade  marks  in  a  series 
of  trade  marks  so  registered  shall  be  deemed  to  be,  and  shall 
be  registered  as,  associated  trade  marks. 

Assignment  and  User  of  Associated  Trade  Marks 

28.  Associated  trade  marks  shall  be  assignable  or  trans- 


JAMAICA  475 

missible  only  as  a  whole  and  not  separately,  but  they  shall  for 
all  other  purposes  be  deemed  to  have  been  registered  as  sep- 
arate trade  marks.  Provided  that  where  under  the  provisions 
of  this  Law  user  of  a  registered  trade  mark  is  required  to  be 
proved  for  any  purpose,  the  tribunal  may  if  and  so  far  as  it 
shall  think  right  accept  user  of  an  associated  registered  trade 
mark,  or  of  the  trade  mark  with  additions  or  alterations  not 
substantially  affecting  its  identity,  as  an  equivalent  for 
such  user. 

RENEWAL  OP  REGISTRATION 
Duration  of  Registration 

29.  The  registration  of  a  trade  mark  shall  be  for  a  period 
of  fourteen  years,  but  may  be  renewed  from  time  to  time  in 
accordance  with  the  provisions  of  this  Law. 

Renewal  of  Registration 

30.  The  Registrar  shall,  on  application  made  by  the  regis- 
tered proprietor  of  a  trade  mark  in  the  prescribed  manner  and 
within  the  prescribed  period,  renew  the  registration  of  such 
trade  mark  for  a  period  of  fourteen  years  from  the  expiration 
of  the  original  registration  or  of  the  last  renewal  of  registra- 
tion, as  the  case  may  be,  which  date  is  herein  termed  "the 
expiration  of  the  last  registration." 

Procedure  on  Expiry  of  Period  of  Registration 

31.  At  the  prescribed  time  before  the  expiration  of  the 
last  registration  of  a  trade  mark,  the  Registrar  shall  send  notice 
in  the  prescribed  manner  to  the  registered  proprietor  at  his 
registered  address  of  the  date  at  which  the  existing  registration 
will  expire  and  the  conditions  as  to  payment  of  fees  and  other- 
wise upon  which  a  renewal  of  such  registration  may  be  obtained, 
and  if  at  the  expiration  of  the  time  prescribed  in  that  behalf 
such  conditions  have  not  been  duly  complied  with,  the  Registrar 
may  remove  such  trade  mark  from  the  register,  subject  to  such 
conditions  (if  any)  as  to  its  restoration  to  the  register  as  may 
be  prescribed. 

Status  of  Unrenewed  Trade  Mark 

32.  Where  a  trade  mark  has  been  removed  from  the  regis- 
ter for  nonpayment  of  the  fee  for  renewal,  such  trade  mark 
shall,  nevertheless,  for  the  purpose  of  any  application  for 
registration   during   one   year   next   after   the    date   of   such 
removal,  be  deemed  to  be  a  trade  mark  which  is  already  regis- 
tered, unless  it  is  shown  to  the  satisfaction  of  the  Registrar  that 
there  had  been  no  bona  fide  trade  user  of  such  trade  mark  dur- 
ing the  two  years  immediately  preceding  such  removal. 


476  JAMAICA 

CORRECTION  AND  RECTIFICATION  OF  THE  REGISTER 
Correction  of  Register 

33.  The  Registrar  may,  on  request  made  in  the  prescribed 
manner  by  the  registered  proprietor  or  by  some  person  entitled 
by  law  to  act  in  his  name, — 

(1)  Correct  any  error  in  the  name  or  address  of  the  regis- 
tered proprietor  of  a  trade  mark;  or 

(2)  Enter  any  change  in  the  name  or  address  of  the  per- 
son who  is  registered  as  proprietor  of  a  trade  mark;  or 

(3)  Cancel  the  entry  of  a  trade  mark  on  the  register;  or 

(4)  Strike  out  any  goods  or  classes  of  goods  from  those 
for  which  a  trade  mark  is  registered;  or 

(5)  Enter  a  disclaimer  or  memorandum  relating  to  a  trade 
mark  which  does  not  in  any  way  extend  the  rights  given  by  the 
existing  registration  of  such  trade  mark. 

Any  decision  of  the  Registrar  under  this  section  shall  be 
subject  to  appeal  to  the  Court. 

Registration  of  Assignments,  Etc. 

34.  Subject  to  the  provisions  of  this  Law  where  a  person 
becomes  entitled  to  a  registered  trade  mark  by  assignment, 
transmission,  or  other  operation  of  law,  the  Registrar  shall,  on 
request  made  in  the  prescribed  manner,  and  on  proof  of  title 
to  his  satisfaction,  cause  the  name  and  address  of  such  person 
to  be  entered  on  the  register  as  proprietor  of  the  trade  mark. 
Any  decision  of  the  Registrar  under  this  section  shall  be  subject 
to  appeal  to  the  Court. 

Alteration  of  Registered  Trade  Mark 

35.  The  registered  proprietor  of  any  trade  mark  may 
apply  in  the  prescribed  manner  to  the  Registrar  for  leave  to 
add  to  or  alter  such  trade  mark  in  any  manner  not  substan- 
tially affecting  the  identity  of  the  same,  and  the  Registrar  may 
refuse  such  leave  or  may  grant  the  same  on  such  terms  as  he 
may  think  fit,  but  any  such  refusal  or  conditional  permission 
shall  be  subject  to  appeal  to  the  Court.    If  leave  be  granted, 
the  trade  mark  as  altered  shall  be  advertised  in  the  prescribed 
manner. 

Rectification  of  Register 

36.  Subject  to  the  provisions  of  this  Law — 

(1)  The  Court  may  on  the  application  in  the  prescribed 
manner  of  any  person  aggrieved  by  the  non-insertion  in  or 
omission  from  the  register  of  any  entry,  or  by  any  entry  made 
in  the  register  without  sufficient  cause,  or  by  any  entry  wrongly 
remaining  on  the  register,  or  by  any  error  or  defect  in  any 


JAMAICA  477 

entry  in  the  register,  make  such  order  for  making,  expunging, 
or  varying  such  entry,  as  it  may  think  fit : 

(2)  The  Court  may  in  any  proceeding  under  this  section 
decide  any  question  that  it  may  be  necessary  or  expedient  to 
decide  in  connection  with  the  rectification  of  the  register: 

(3)  In  case  of  fraud  in  the  registration  or  transmission 
of  a  registered  trade  mark,  the  Registrar  may  himself  apply 
to  the  Court  under  the  provisions  of  this  section: 

(4)  Any  order  of  the  Court  rectifying  the  register  shall 
direct  that  notice  of  the  rectification  shall  be  served  upon  the 
Eegistrar  in  the  prescribed  manner  who  shall  upon  receipt  of 
such  notice  rectify  the  register  accordingly. 

Trade  Marks  Registered  Under  Previous  Laws 

37.  No  trade  mark  which  is  upon  the  register  at  the  com- 
mencement of  this  Law  and  which  under  this  Law  is  a  regis- 
trable  trade  mark  shall  be  removed  from  the  register  on  the 
ground  that  it  was  not  registrable  under  the  laws  in  force  at 
the  date  of  its  registration.    But  nothing  in  this  section  con- 
tained shall  subject  any  person  to  any  liability  in  respect  of 
any  act  or  thing  done  before  the  commencement  of  this  Law  to 
which  he  would  not  have  been  subject  under  the  Laws  then 
in  force. 

Non-User  of  Trade  Mark 

38.  A  registered  trade  mark  may,  on  the  application  to 
the  Court  of  any  person  aggrieved,  be  taken  off  the  register 
in  respect  of  any  of  the  goods  for  which  it  is  registered,  on  the 
ground  that  it  was  registered  by  the  proprietor  or  a  predecessor 
in  title  without  any  bona  fide  intention  to  use  the  same  in  con- 
nection with  such  goods,  and  there  has  in  fact  been  no  bona 
fide  user  of  the  same  in  connection  therewith,  or  on  the  ground 
that  there  has  been  no  bona  fide  user  of  such  trade  mark  in 
connection  with  such  goods  during  the  five  years  immediately 
preceding  the  application,  unless  in  either  case  such  non-user 
is  shown  to  be  due  to  special  circumstances  in  the  trade,  and 
not  to  any  intention  not  to  use  or  to  abandon  such  trade  mark 
in  respect  of  such  goods. 

EFFECT  OF  REGISTRATION 
Powers  of  Registered  Proprietor 

39.  Subject  to  the  provisions  of  this  Law — 

(1)  The  person  for  the  time  being  entered  in  the  register 
as  proprietor  of  a  trade  mark  shall,  subject  to  any  rights 
appearing  from  such  register  to  be  vested  in  any  other  person, 
have  power  to  assign  the  same,  and  to  give  effectual  receipts 
for  any  consideration  for  such  assignment: 


478  JAMAICA 

(2)  Any  equities  in  respect  of  a  trade  mark  may  be 
enforced  in  like  manner  as  in  respect  of  any  other  personal 
property. 

Rights  of  Proprietor  of  Trade  Mark 

40.  Subject  to  the  provisions  of  section  forty-two  of  this 
Law  and  to  any  limitations  and  conditions  entered  upon  the 
register,  the  registration  of  a  person  as  proprietor  of  a  trade 
mark  shall,  if  valid,  give  to  such  person  the  exclusive  right  to 
the  use  of  such  trade  mark  upon  or  in  connection  with  the 
goods  in  respect  of  which  it  is  registered:  Provided  always 
that  where  two  or  more  persons  are  registered  proprietors  of 
the  same  (or  substantially  the  same)  trade  mark  in  respect  of 
the  same  goods  no  rights  of  exclusive  user  of  such  trade  mark 
shall  (except  so  far  as  their  respective  rights  shall  have  been 
defined  by  the  Court)  be  acquired  by  any  one  of  such  persons 
as  against  any  other  by  the  registration  thereof,  but  each  of 
such  persons  shall  otherwise  have  the  same  rights  as  if  he  were 
the  sole  registered  proprietor  thereof. 

Registration  to  Be  Primd  Facie  Evidence  of  Validity. 

41.  In  all  legal  proceedings  relating  to  a  registered  trade 
mark  (including  applications  under  section  thirty-six  of  this 
Law)  the  fact  that  a  person  is  registered  as  proprietor  of  such 
trade  mark  shall  be  prima  facie  evidence  of  the  validity  of  the 
original  registration  of  such  trade  mark  and  of  all  subsequent 
assignments  and  transmissions  of  the  same. 

Registration  to  Be  Conclusive  After  Seven  Years 

42.  In  all  legal  proceedings  relating  to  a  registered  trade 
mark   (including  applications  under  section  thirty- six  of  this 
Law)  the  original  registration  of  such  trade  mark  shall  after 
the  expiration  of  seven  years  from  the  date  of  such  original 
registration   (or  seven  years  from  the  passing  of  this  Law, 
whichever  shall  last  happen)  be  taken  to  be  valid  in  all  respects 
unless  such  original  registration  was  obtained  by  fraud,  or 
unless  the  trade  mark  offends  against  the  provisions  of  section 
eleven  of  this  Law. 

Provided  that  nothing  in  this  Law  shall  entitle  the  pro- 
prietor of  a  registered  trade  mark  to  interfere  with  or  restrain 
the  user  by  any  person  of  a  similar  trade  mark  upon  or  in 
connection  with  goods  upon  or  in  connection  with  which  such 
person  has,  by  himself  or  his  predecessors  in  business,  con- 
tinuously used  such  trade  mark  from  a  date  anterior  to  the 
user  of  the  first-mentioned  trade  mark  by  the  proprietor 
thereof  or  his  predecessors  in  business,  or  to  object  (on  such 
user  being  proved)  to  such  person  being  put  upon  the  register 


JAMAICA  479 

for  such  similar  trade  mark  in  respect  of  such  goods  under 
the  provisions  of  section  twenty-two  of  this  Law. 
Unregistered  Trade  Mark 

43.  No  person  shall  be  entitled  to  institute  any  proceed- 
ing to  prevent  or  to  recover  damages  for  the  infringement  of 
an  unregistered  trade  mark  unless  such  trade  mark  was  in  use 
before  the  first  of  April  one  thousand  eight  hundred  and  eighty- 
nine,  and  has  been  refused  registration  under  this  Law  or  any 
law  repealed  by  this  Law.     The  Registrar  may,  on  request, 
grant  a  certificate  that  such  registration  has  been  refused. 

Infringement 

44.  In  an  action  for  the  infringement  of  a  trade  mark 
the   Court  trying  the  question  of  infringement   shall   admit 
evidence  of  the  usages  of  the  trade  in  respect  to  the  get-up  of 
the  goods  for  which  the  trade  mark  is  registered,  and  of  any 
trade  marks  or  get-up  legitimately  used  in  connection  with 
such  goods  by  other  persons. 

User  of  Name,  Address,  or  Description  of  Goods 

45.  No  registration  under  this  Law  shall  interfere  with 
any  bona  fide  use  by  a  person  of  his  own  name  or  place  of  busi- 
ness or  that  of  any  of  his  predecessors  in  business,  or  the  use  by 
any  person  or  any  bona  fide  description  of  the  character  or 
quality  of  his  goods. 

"Passing  Off"  Action 

46.  Nothing  in  this  Law  contained  shall  be  deemed  to 
affect  rights  of  action  against  any  person  for  passing  off  goods 
as  those  of  another  person  or  the  remedies  in  respect  thereof. 

LEGAL  PROCEEDINGS 
Certificate  of  Validity 

47.  In  any  legal  proceedings  in  which  the  validity  of  the 
registration  of  a  registered  trade  mark  comes  into  question  and 
is  decided  in  favour  of  the  proprietor  of  such  trade  mark,  the 
Court  may  certify  the  same,  and  if  it  so  certifies  then  in  any 
subsequent  legal  proceedings  in  which  such  validity  comes  into 
question  the  proprietor  of  the  said  trade  mark  on  obtaining  a 
final  order  or  judgment  in  his  favour  shall  have  his  full  costs, 
charges,  and  expenses  as  between  solicitor  and  client,  unless  in 
such  subsequent  proceeding  the  Court  certifies  that  he  ought 
not  to  have  the  same. 

Registrar  to  Have  Notice  of  Proceeding  for  Rectification 

48.  In  any  legal  proceeding  in  which  the  relief  sought 
includes  alteration  or  rectification  of  the  register,  the  Regis- 
trar shall  have  the  right  to  appear  and  be  heard,  and  shall 


480  JAMAICA 

appear  if  so  directed  by  the  Court.  Unless  otherwise  directed 
by  the  Court,  the  Registrar  in  lieu  of  appearing  and  being  heard 
may  submit  to  the  Court  a  statement  in  writing  signed  by  him, 
giving  particulars  of  the  proceedings  before  him  in  relation  to 
the  matter  in  issue  or  of  the  grounds  of  any  decision  given  by 
him  affecting  the  same  or  of  the  practice  of  the  office  in  like 
cases,  or  of  such  other  matters  relevant  to  the  issues,  and  within 
his  knowledge  as  sutfh  Registrar,  as  he  shall  think  fit,  and  such 
statement  shall  be  deemed  to  form  part  of  the  evidence  in  the 
proceeding. 

COSTS 
Costs  of  Proceedings  Before  the  Court 

49.  In  all  proceedings  before  the  Court  under  this  Law 
the  costs  of  the  Registrar  shall  be  in  the  discretion  of  the  Court, 
but  the  Registrar  shall  not  be  ordered  to  pay  the  costs  of  any 
other  of  the  parties. 

EVIDENCE 
Mode  of  Giving  Evidence 

50.  In  any  proceeding  under  this  Law  before  the  Regis- 
trar, the  evidence  shall  be  given  by  statutory  declaration  in  the 
absence  of  directions  to  the  contrary,  but,  in  any  case  in  which 
the  Registrar  shall  think  it  right  so  to  do,  he  may  (with  the 
consent  of  the  parties)  take  evidence  viva  voce  in  lieu  of  or  in 
addition  to  evidence  by  declaration.    Any  such  statutory  decla- 
ration may  in  the  case  of  appeal  be  used  before  the  Court  in 
lieu  of  evidence  by  affidavit,  but  if  so  used  shall  have  all  the 
incidents  and  consequences  of  evidence  by  affidavit. 

In  case  any  part  of  the  evidence  is  taken  viva  voce  the 
Registrar  shall  have  power  to  require  the  attendance  of  wit- 
nesses and  the  production  of  documents  and  to  take  evidence 
on  oath,  and  shall  for  the  purposes  of  any  proceeding  under 
this  Law  before  him  have  all  the  powers  possessed  by  the 
Registrar  of  the  Supreme  Court  in  relation  to  proceedings  in 
the  Supreme  Court,  and  the  Court  shall  have  power  to  enforce 
the  orders  of  the  Registrar  as  if  they  were  those  of  a  Judge. 

Sealed  Copies  to  Be  Evidence 

51.  Printed  or  written  copies  or  extracts  of  or  from  the 
register,  purporting  to  be  certified  by  the  Registrar  and  sealed 
with  the  seal  of  the  General  Register  Office,  shall  be  admitted 
in  evidence  in  all  Courts  in  this  Island,  and  in  all  proceedings, 
without  further  proof  or  production  of  the  originals. 

Certificate  of  Registrar  to  Be  Evidence 

52.  A  certificate  purporting  to  be  under  the  hand  of  the 
Registrar  as  to  any  entry,  matter,  or  thing  which  he  is  author- 


JAMAICA  481 

ised  by  this  Law,  or  Rules  made  thereunder,  to  make  or  do, 
shall  be  prima  facie  evidence  of  the  entry  having  been  made, 
and  of  the  contents  thereof,  and  of  the  matter  or  thing  having 
been  done  or  not  done. 

POWERS  AND  DUTIES  OF  REGISTRAR  OF  TRADE  MARKS 
Exercise  of  Discretionary  Power  By  Registrar 

53.  Where  any  discretionary  or  other  power  is  given  to 
the  Registrar  by  this  Law  or  Rules  made  thereunder  he  shall 
not  exercise  that  power  adversely  to  the  applicant  for  registra- 
tion or  the  registered  proprietor  of  the  trade  mark  in  question 
without  (if  duly  required  so  to  do  within  the  prescribed  time) 
giving  such  applicant  or  registered  proprietor  an  opportunity 
of  being  heard. 

Appeal  From  Registrar 

54.  Except  where  expressly  given  by  the  provisions  of 
this  Law  or  Rules  made  thereunder  there  shall  be  no  appeal 
from  a  decision  of  the  Registrar  but  the  Court,  in  dealing  with 
any  question  of  the  rectification  of  the  register  (including  all 
applications  under  the  provisions  of  section  thirty-six  of  this 
Law),  shall  have  power  to  review  any  decision  of  the  Registrar 
relating  to  the  entry  in  question  or  the  correction  sought  to 
be  made. 

55.  Where  by  this  Law  any  act  has  to  be  done  by  or  to 
any  person  in  connection  with  a  trade  mark  or  proposed  trade 
mark  or  any  procedure  relating  thereto,  such  act  may  under 
and  in  accordance  with  Rules  made  under  this  Law  or  in  par- 
ticular cases  by  special  leave  of  the  Court  be  done  by  or  to  an 
agent  of  such  party  duly  authorised  in  the  prescribed  manner. 

Registrar  May  Take  Direction  of  Law  Officer 

56.  The  Registrar  may,  in  any  case  of  doubt  or  difficulty 
arising  in  the  administration  of  any  of  the  provisions  of  this 
Law,  apply  to  His  Majesty's  Attorney-General  for  Jamaica 
for  directions  in  the  matter. 

RULES  AND  FORMS 

Power  of  Governor  in  Privy  Council  to  Make  Rules 
and  Prescribe  Forms 

57.  (1)  Subject  to  the  provisions  of  this  Law  the  Gov- 
ernor in  Privy  Council  may  from  time  to  time  make  such  rules, 
prescribe  such  forms,  and  generally  do  such  things  as  he  may 
think  expedient — 

(a)  For  regulating  the  practice  under  this  Law: 

(b)  For  classifying  goods  for  the  purposes  of  registration 
of  trade  marks: 

(c)  For  making  or  requiring  duplicates  of  trade  marks  and 


482  JAMAICA 

other  documents: 

(d)  For  securing  and  regulating  the  publishing  and  selling 
or  distributing  in  such  manner  as  he  may  think  fit,  of  copies  of 
trade  marks  and  other  documents: 

(e)  Generally,  for  regulating  the  business  of  the  office  in 
relation  to  trade  marks  and  all  things  by  this  Law  placed  under 
the  direction  or  control  of  the  Registrar. 

(2)  Rules  under  this  section  shall,  when  made,  be  published 
in  the  Jamaica  Gazette  and  shall  whilst,  in  force,  be  of  the  same 
effect  as  if  they  were  contained  in  this  Law. 

FEES 

58.  There  shall  be  paid  in  respect  of  applications  and 
registration  and  other  matters  under  this  Law  such  fees  as  may 
be  prescribed  by  the  Governor  in  Privy  Council,  and  such  fees 
shall  be  paid  into  the  Treasury  to  the  credit  of  the  General 
Revenue  of  the  Island. 

SPECIAL  TRADE  MARKS 
Standardization,  Etc.,  Trade  Marks 

59.  Where    any   association   or   person   undertakes    the 
examination  of  any  goods  in  respect  of  origin,  material,  mode 
of  manufacture,  quality,  accuracy,  or  other  characteristic,  and 
certifies  the  result  of  such  examination  by  mark  used  upon  or 
in  connection  with  such  goods,  the  Court  may,  if  it  shall  judge 
it  to  be  to  the  public  advantage,  permit  such  association  or 
person  to  register  such  mark  as  a  trade  mark  in  respect  of 
such  goods,  whether  or  not  such  association  or  person  be  a 
trading  association  or  trader  or  possessed  of  a  goodwill  in 
connection  with  such  examination  and  certifying.     When  so 
registered  such  trade  mark  shall  be  deemed  in  all  respects  to 
be  a  registered  trade  mark,  and  such  association  or  person  to 
be  the  proprietor  thereof,  save  that  such  trade  mark  shall  be 
transmissible  or  assignable  only  by  permission  of  the  Court. 

Exemption  from  Stamp  Duty 

60.  All  certificates  and  certified  copies  given  by  the  Regis- 
trar under  this  Law  shall  be  exempt  from  Stamp  Duty. 

OFFENCES 
Falsification  of  Entries  in  Register 

61.  If  any  person  makes  or  causes  to  be  made  a  false  entry 
in  the  register  kept  under  this  Law,  or  a  writing  falsely  pur- 
porting to  be  a  copy  of  an  entry  in  any  such  register,  or  pro- 
duces or  tenders  or  causes  to  be  produced  or  tendered  in  evi- 
dence any  such  writing,  knowing  the  entry  or  writing  to  be 
false,  he  shall  be  guilty  of  a  misdemeanor,  and  on  conviction 
thereof  shall  be  liable  to  be  imprisoned  for  any  term  not  exceed- 


JAMAICA  483 

ing  two  years  with  or  without  hard  labour. 

Penalty  On  Falsely  Representing  a  Trade  Mark  As  Registered 

62.  (1)  Any  person  who  represents  a  trade  mark  as  reg- 
istered which  is  not  so,  shall  be  liable  for  every  offence  on  sum- 
mary conviction  before  a  Resident  Magistrate  or  two  Justices  of 
the  Peace  to  a  fine  not  exceeding  five  pounds  and  in  default  of 
payment  to  imprisonment  with  or  without  hard  labour  for  any 
term  not  exceeding  two  months. 

(2)  A  person  shall  be  deemed,  for  the  purposes  of  this 
enactment,  to  represent  that  a  trade  mark  is  registered,  if  he 
uses  in  connection  with  the  trade  mark  the  word  "  registered " 
or  any  words  expressing  or  implying  that  registration  has  been 
obtained  for  the  trade  mark. 

ROYAL  ARMS 
Unauthorised  Assumption  of  Royal  Arms 

63.  If  any  person,  without  the  authority  of  His  Majesty, 
uses  in  connection  with  any  trade,  business,  calling,  or  profes- 
sion, the  Royal  Arms  (or  arms  so  closely  resembling  the  same 
as  to  be  calculated  to  deceive)  in  such  manner  as  to  be  calcu- 
lated to  lead  to  the  belief  that  he  is  duly  authorised  so  to  use 
the  Royal  Arms,  or  if  any  person  without  the  authority  of  His 
Majesty  or  of  a  member  of  the  Royal  Family,  uses  in  connection 
with  any  trade,  business,  calling,  or  profession  any  device, 
emblem,  or  title  in  such  manner  as  to  be  calculated  to  lead  to 
the  belief  that  he  is  employed  by  or  supplies  goods  to  His 
Majesty  or  such  member  of  the  Royal  Family,  he  may,  at  the 
suit  of  any  person  who  is  authorised  to  use  such  arms  or  such 
device,  emblem,  or  title,  or  is  authorised  by  the  Lord  Chamber- 
lain to  take  proceedings  in  that  behalf,  be  restrained  by  injunc- 
tion or  interdict  from  continuing  so  to  use  the  same :  Provided 
that  nothing  in  this  section  shall  be  construed  as  affecting  the 
right,  if  any,  of  the  proprietor  of  a  trade  mark  containing  any 
such  arms,  device,  emblem,  or  title  to  continue  to  use  such 
trade  mark. 

Repeal:  Savings 

64.  Law  17  of  1888,  entitled  "The  Registration  of  Trade 
Marks  Law,  1888,"  Law  6  of  1889  entitled  "The  Registration 
of  Trade  Marks  Law,  1888,  Amendment  Law,  1889,"  and  Law 
10  of  1905,  entitled  "The  Registration  of  Trade  Marks  Law, 
1888,  Amendment  Law,  1905,"  are  hereby  repealed,  but  this 
repeal  shall  not  affect  any  rule,  table  of  fees,  or  classification 
of  goods  made  under  any  enactment  so  repealed,  but  every  such 
rule,  table  of  fees,  or  classification  of  goods  shall  continue  in 
force  as  if  made  under  this  Law  until  superseded  by  rules, 
tables  of  fees,  or  classification  under  this  Law. 


JAPAN 

LAW  NO.  99  OF  APRIL  29,  1921*f 

ARTICLE  1.  Persons  who  desire  exclusively  to  use  a  trade 
mark  in  order  to  distinguish  merchandise  as  being  produced, 
manufactured,  worked  upon,  selected,  certified,  dealt  with  or 
sold  by  them  in  connection  with  their  business,  may  have  such 
trade  mark  registered. 

In  order  to  be  registrable,  a  trade  mark  must  consist  of 
written  characters,  devices,  signs,  or  a  combination  thereof,  and 
must  also  be  special  and  distinctive. 

In  having  a  trade  mark  registered,  it  is  permissible  to  limit 
the  colour  or  colours  to  be  applied  thereto. 

ART.  2.    The  following  trade  marks  are  non-registrable : 

1)  Those  which  contain  a  device  identical  with,  or  similar 
to,  the  Imperial  Chrysanthemum  Crest ; 

2)  Those   which   are   identical   with,    or   similar   to,   the 
national  flag,  the  military  or  naval  flags,  a  decoration,  a  medal 
of  merit,  a  badge  or  those  identical  with,  or  similar  to,  a  foreign 
national  flag; 

3)  Those  which  are  identical  with,  or  similar  to,  a  Bed 
Cross  badge  on  a  white  ground  or  the  designation  of,  or  written 
characters  for,  Bed  Cross  or  Geneva  Cross ; 

4)  Those  which  are  liable  to  disturb  public  order  or  morals ; 

5)  Those  containing  a  likeness  of  or  the  name,  appellation, 
or  trade  name  of  another  person,  except  with  the  consent  of 
such  other  person; 

6)  Those  which  are  identical  with,  or  similar  to,  marks 
customarily  used  for  identical  or  similar  merchandise; 

7)  Those  which  have  a  device  identical  with,  or  similar  to, 
a  medal,  certificate  of  merit  or  testimonial  awarded  by  an  exhi- 
bition held  by  the  Government  or  the  Administration  of  a  Do. 
Fu  or  Ken,  or  an  equivalent  thereto,  or  with  the  permission  of 
the  Government,  or  by  an  Exhibition  held  in  a  foreign  country 
either  by  or  with  the  permission  of  the  authorities ;  but  this  does 
not  apply  when  a  recipient  of  such  a  medal,  certificate  of  merit, 
or  testimonial  desires  to  use  the  device  thereof  as  a  part  of  his 
trademark;  Mi 

*Due  to  the  multiplicity  of  references  made  herein  to  the  old  Trade  Mark 
Law  (of  April  2,  1909),  and  to  the  existing  Patent  Law  (of  April  29,  1921),  the 
provisions  in  question  are  given  immediately  following  the  present  text. 

t  From  "Japanese  Laws  and  Ordinances  concerning  Patents,  Trade-marks, 
Designs  and  Utility  Models,"  by  J.  E.  de  Becker,  D.C.L.,  Yokohama,  1922. 


JAPAN  485 

8)  Those  which  are  identical  with,  or  similar  to,  a  mark 
belonging  to  another  person  and  widely  known  among  dealers 
and  consumers,  and  which  are  used  for  identical  or  similar 
merchandise ; 

9)  Those  which  are  identical  with,  or  similar  to,  a  regis- 
tered trade  mark  of  another  person  and  which  are  used  for 
identical  or  similar  merchandise; 

10)  Those  which  are  identical  with,  or  similar  to,  a  trade 
mark  belonging  to  another  person,  in  respect  of  which  one  year 
has  not  yet  elapsed  since  its  registration  ceased  to  be  valid; 
but  this  does  not  apply  if  the  trade  mark  belonging  to  the  other 
person  had  not  been  used  for  at  least  one  year  before  its  regis- 
tration ceased  to  be  valid ; 

11)  Those  which  are  liable  to  cause  mistakes  or  confusion 
of  merchandise. 

Even  when  a  trade  mark  is  non-registrable  because  a  part 
liable  to  be  regarded  as  an  essential  part  does  not  by  itself  fulfill 
the  condition  of  being  special  and  distinctive  as  provided  in 
paragraph  2  of  the  foregoing  article,  or  comes  under  No.  6  of 
the  foregoing  paragraph,  if  the  applicant  states  that  he  claims 
no  right  in  respect  of  that  part,  the  trade  mark  will  be  registered. 

ART.  3.  Trade  marks  belonging  to  the  same  person,  which 
are  similar  to  each  other  and  which  are  to  be  used  for  identical 
merchandise  or  trade  marks  belonging  to  the  same  person  which 
are  identical  with,  or  similar  to,  each  other,  and  which  are  to 
be  used  for  similar  merchandise,  are  registered  only  if  applica- 
tion is  made  for  their  registration  as  ' '  associated  trade  marks.  ' ' 

ART.  4.  In  case  there  is  a  conflict  of  separate  applications 
for  registration  in  respect  of  trade  marks  which  are  identical 
with,  or  similar  to,  each  other,  and  which  are  to  be  used  for 
identical  or  similar  merchandise,  registration  will  only  be  made 
for  the  first  applicant;  but  if  the  applications  are  of  the  same 
day,  registration  will  be  made  according  to  the  mutual  agree- 
ment of  the  parties,  and  if  no  agreement  is  arrived  at,  none 
will  be  registered. 

If,  in  respect  of  a  trade  mark  used  on  merchandise  exhibited 
at  an  exhibition  held  by  the  Government,  or  the  Administration 
of  a  Do,  Fu  or  Ken,  or  an  equivalent  thereto,  or  with  the  permis  - 
sion  of  the  Government,  or  at  an  international  exhibition  held  by 
or  with  the  permission  of  the  authorities  in  the  territory  of  a 
country  belonging  to  the  Union  for  the  Protection  of  Industrial 
Property,  the  user  of  such  trade  mark  applies  for  the  registra- 
tion thereof  within  six  (6)  months  from  the  day  of  the  opening 
thereof,  the  application  is  deemed  to  have  been  made  on  the  day 
of  the  opening. 


486  JAPAN 

The  provisions  of  the  preceding  paragraph  do  not,  how- 
ever, apply  to  any  person  who  has  failed  to  give  the  notice 
required,  in  cases  where  it  has  been  provided  by  ordinance  that 
previous  notice  shall  be  given  in  regard  to  exhibits  mentioned 
in  the  foregoing  paragraph. 

If  it  is  found  necessary  to  extend  protection  to  trade  marks 
used  on  merchandise  exhibited  at  an  exhibition  other  than  one 
of  the  international  exhibitions  mentioned  in  paragraph  2,  held 
in  the  territory  of  a  foreign  country  either  by  the  authorities  or 
with  the  permission  of  the  authorities,  the  matter  will  be  pro- 
vided for  by  Imperial  Ordinance. 

ABT.  5.  The  applicant  for  registration  of  a  trade  mark 
shall  designate  the  merchandise  on  which  the  trade  mark  is  to 
be  used  under  the  classification  fixed  by  ordinance. 

ABT.  6.  The  right  arising  from  an  application  for  the 
registration  of  a  trade  mark  can  only  be  transferred  together 
with  the  business  therein. 

In  case  the  right  arising  from  an  application  for  the  regis- 
tration of  a  trade  mark  is  jointly  owned,  none  of  the  joint 
owners  can  transfer  his  share  therein  except  with  the  consent  of 
the  other  joint  owner  or  owners. 

Succession  to  the  right  arising  from  an  application  for  the 
registration  of  a  trade  mark  cannot  be  set  up  against  third 
persons  unless  the  successor  notifies  the  change  in  the  name  of 
the  applicant.  If  the  notifications  are  of  the  same  day,  the 
mutual  agreement  of  the  parties  shall  govern,  and  if  no  agree- 
ment is  arrived  at,  the  succession  can  be  set  up  by  none  of  them 
against  third  persons. 

ABT.  7.  A  trade  mark  right  comes  into  existence  by  regis- 
tration. 

A  person  entitled  to  a  trade  mark  right  has  the  right  exclu- 
sively to  use  the  trade  mark  for  the  merchandise  designated 
under  the  provisions  of  Art.  5.  In  case  a  trade  mark  right 
conflicts  with  a  design  right  in  respect  of  which  application  was 
made  prior  to  the  day  of  application  (respecting  the  trade  mark) 
by  reason  of  the  mode  in  which  the  registered  trade  mark  is 
employed,  the  person  entitled  to  such  trade  mark  right  cannot 
use  the  registered  trade  mark  in  such  a  mode  except  with  a 
working  permission  from  the  person  entitled  to  the  design  right. 

ABT.  8.  The  effect  of  a  trade  mark  right  does  not  extend 
to  the  indication  by  methods  in  general  use  of  one 's  name,  appel- 
lation, or  trade  name,  or  of  the  common  name  of  one 's  merchan- 
dise, its  place  of  production,  grade,  quality,  efficacy,  method  of 
use,  manner  of  manufacture,  time,  quantity,  shape  or  price,  but 
this  does  not  apply  if,  after  the  registration  of  the  trade  mark, 


JAPAN  487 

a  name,  appellation,  or  trade  name  has  been  used  in  bad  faith. 

The  effect  of  a  trade  mark  right  does  not  extend  to  that 
part  in  respect  of  which  it  has  been  stated,  under  the  provisions 
of  Art.  2,  paragraph  2,  that  no  right  is  claimed. 

ART.  9.  Any  person  who  has,  in  respect  to  identical  or 
similar  merchandise  used  in  good  faith  from  before  the  appli- 
cation for  the  registration  of  a  registered  trade  mark  of  another 
person,  a  mark  identical  with,  or  similar  to,  the  same,  and  which 
is  widely  known  among  dealers  and  consumers,  may  continue  the 
use  thereof  notwithstanding  the  registration  of  the  trade  mark 
of  the  other  person.  The  same  applies  to  a  person  who  has 
succeeded  to  the  use  of  the  mark  together  with  the  business 
or  pursuit. 

In  the  case  contemplated  in  the  foregoing  paragraph,  the 
person  entitled  to  the  trade  mark  right  may  require  the  user 
of  the  mark  to  add  a  suitable  indication  for  preventing  a  con- 
fusion of  merchandise. 

ART.  10.  The  period  of  duration  of  a  trade  mark  right 
terminates  in  twenty  (20)  years  from  the  day  of  registration. 

ART.  11.  The  period  of  duration  mentioned  in  the  fore- 
going article  may  be  renewed  on  the  application  for  a  registra- 
tion of  renewal;  excepting  when  the  trade  mark  under  such 
application  for  registration  of  renewal  falls  within  the  purview 
of  Art.  2,  paragraph  1,  Nos.  1-4,  6,  7,  or  11. 

ART.  12.  A  trade  mark  right  may  only  be  transferred  to- 
gether with  the  business. 

A  trade  mark  right  may  be  transferred  in  separate  parts 
corresponding  to  sorts  of  merchandise  specified  in  accordance 
with  the  provisions  of  Art.  5. 

A  trade  mark  right  in  associated  trade  marks  cannot  be 
transferred  in  divisions. 

When  a  trade  mark  right  is  jointly  owned,  none  of  the  joint 
owners  can  transfer  his  share  therein  except  with  the  consent 
of  the  other  joint  owner  or  owners. 

ART.  13.  A  trade  mark  right  is  terminated  on  the  aban- 
donment of  the  business  by  the  person  entitled  to  the  trade 
mark  right. 

The  trade  mark  right  in  a  trade  mark  which  has  been  regis- 
tered as  a  foreign  registered  trade  mark  is  terminated  when  the 
trade  mark  right  in  the  home  country  is  terminated. 

ART.  14.  When  it  falls  within  the  purview  of  any  one  of 
the  following  numbers  the  registration  of  a  trade  mark  shall  be 
cancelled  by  a  trial : 

1)  If  the  person  entitled  to  the  trade  mark  right  has,  with- 
out good  reason,  not  used  the  trade  mark  in  the  Empire  for 


488  JAPAN 

one  (1)  year  from  the  day  of  registration  or  suspended  its  use 
for  three  consecutive  years ;  but  this  does  not  apply  if  the  mark 
has  been  used  on  one  of  the  articles  of  merchandise  designated 
under  the  provisions  of  Art.  5  or  one  of  the  associated  marks 
has  been  used; 

2)  If  the  trade  mark  right  has  been  transferred  otherwise 
than  by  inheritance  and  application  for  the  registration  of  the 
transfer  of  the  trade  mark  right  has  not  been  made  within  one 
(1)  year  from  the  day  of  the  transfer. 

The  provisions  of  No.  1  of  the  foregoing  paragraph  do  not 
apply  to  trade  marks  registered  as  foreign  registered  trade 
marks. 

ART.  15.  If  a  person  entitled  to  a  trade  mark  right  has 
used  his  registered  trade  mark  after  purposely  making  such  an 
addition  thereto,  or  alteration  therein,  as  is  liable  to  cause  a 
mistake  or  confusion  of  merchandise,  the  registration  of  the 
trade  mark  shall  be  cancelled  by  a  trial. 

A  person,  the  registration  of  whose  trade  mark  has  been 
cancelled  under  the  provisions  of  the  foregoing  paragraph,  can- 
not obtain  registration  of  an  identical  or  similar  trade  mark 
for  identical  or  similar  merchandise  for  five  (5)  years  from 
the  day  on  which  the  judgment  in  trial  directing  cancellation 
has  become  finally  binding  or  the  court  judgment  has  been  ren- 
dered to  the  same  effect. 

AET.  16.  The  registration  of  a  trade  mark  shall  be  de- 
clared void  by  trial  when  it  falls  within  the  purview  of  any 
one  of  the  following  numbers : 

1)  If  the  registration  has  been  made  contrary  to  the  pro- 
visions of  Arts.  1-4  or  paragraph  2  of  the  foregoing  article ; 

2)  If  the  registration  has  been  made  contrary  to  the  pro- 
visions of  Art.  32  of  the  Patent  Law  which  in  virtue  of  Art.  24 
hereof  apply  mutatis  mutandis  (to  trade  marks) ; 

3)  If  the  registration  has  been  made  on  behalf  of  a  person 
who  is  not  the  successor  to  the  right  which  has  arisen  from  the 
application  for  the  registration  of  the  trade  mark ; 

4)  If  the  registration  has  been  made  contrary  to  a  treaty, 
or  an  equivalent  thereto,  as  specified  to  in  Art.  33  of  the  Patent 
Law  which  in  virtue  of  Art.  24  hereof  applies  mutatis  mutandis, 
and  such  contravention  is  to  be  regarded  as  equivalent  to  those 
set  forth  in  Nos.  1-3,  inclusive ; 

5)  If  the  registration  has  become  contrary  to  the  provi- 
sions of  Art.  32  of  the  Patent  Law,  which  in  virtue  of  Art.  24 
hereof  apply  mutatis  mutandis,  or  if  it  has  become  contrary  to 
a  treaty,  or  an  equivalent  thereto,  referred  to  in  Art.  33  of  the 
Patent  Law,  and  such  contravention  is  to  be  regarded  in  the 


JAPAN  489 

same  light  as  those  mentioned  in  Nos.  1-3. 

When  the  registration  of  a  renewal  of  the  period  of  dura- 
tion of  a  trade  mark  right  falls  within  the  purview  of  any  one 
of  the  following  numbers  it  shall  be  declared  void  by  trial : 

1)  If  the  registration  has  been  made  contrary  to  the  except- 
ing clause  of  Art.  11 ; 

2)  If  the  registration  has  been  made  in  favour  of  a  person 
other  than  the  person  entitled  to  the  trade  mark  right. 

The  registration  of  a  trade  mark  or  of  a  renewal  of  the 
period  of  duration  of  a  trade  mark  right  shall  be  declared  void 
under  the  provisions  of  the  preceding  two  paragraphs  even 
after  the  trade  mark  right  has  been  terminated. 

ART.  17.  In  the  Patent  Office  a  Trade  Mark  Register  shall 
be  kept  in  which  shall  be  registered  the  creation,  transfer,  altera- 
tion and  termination  of  trade  marks  and  other  matters  specified 
in  laws  and  ordinances. 

Regulations  respecting  registrations  shall  be  provided  by 
ordinance. 

ART.  18.  When  a  decision  by  an  Examiner  or  a  patent 
judgment  directing  that  a  trade  mark  shall  be  registered  has 
become  finally  binding,  or  a  court  judgment  has  been  rendered 
to  the  same  effect,  it  shall  be  registered  in  the  Trade  Mark 
Register. 

ART.  19.  The  Patent  Office  shall  publish  a  Trade  Mark 
Gazette  in  which  shall  be  announced  the  particulars  prescribed 
in  this  Law  and  other  necessary  matters  relating  to  registered 
trade  marks. 

ART.  20.  Persons  for  whom  a  trade  mark  is  registered 
shall,  at  the  time  of  registration,  pay  a  single  lump  sum  of 
thirty  yen  (Yen  30)  as  a  registration  fee  for  each  case. 

A  person  for  whom  a  renewal  of  the  period  of  duration  of 
a  trade  mark  right  is  registered  shall,  at  the  time  of  registra- 
tion, pay  a  single  lump  sum  of  fifty  yen  (Yen  50)  as  registra- 
tion fee  for  each  case. 

ART.  21.  When  an  application  is  made  for  the  registra- 
tion of  a  trade  mark  or  of  a  renewal  of  the  period  of  duration 
of  a  trade  mark  right,  an  Examiner  shall  be  caused  to 
examine  it. 

ART.  22.  A  trial  may  be  demanded  in  respect  of  the  follow- 
ing matters,  in  addition  to  those  provided  in  the  Law  or  an 
Imperial  Ordinance  issued  on  the  basis  of  this  Law : 

1)  Cancellation  of  the  registration  of  a  trade  mark  under 
the  provisions  of  Arts.  14,  15  or  31 ; 

2)  Invalidity  of  the  registration  of  a  trade  mark  or  of  a 
renewal  of  the  period  of  duration  of  a  trade  mark  right  under 


490  JAPAN 

the  provisions  of  Art.  16 ; 

3)  Determination  of  the  limits  of  a  trade  mark  right. 

A  trial  for  cancellation  under  No.  1  of  the  foregoing  para- 
graph, or  a  trial  for  invalidity  under  No.  2,  can  only  be  de- 
manded by  persons  interested  or  by  an  Examiner;  but  an  Ex- 
aminer cannot  demand  a  trial  for  invalidity  on  the  ground  that 
the  registration  contravenes  the  provisions  of  Art.  2,  paragraph 
1,  Nos.  5,  8-10;  Art.  3  or  Art.  4,  or  that  it  falls  within  the 
purview  of  Art.  16,  paragraph  1,  No.  3,  or  paragraph  2,  No.  2. 

A  trial  for  determination  under  paragraph  1,  No.  3,  can 
only  be  demanded  by  persons  interested. 

ART.  23.  A  trial  for  invalidity  under  paragraph  1,  No.  2, 
of  the  foregoing  article  cannot  be  demanded  if  five  (5)  years 
have  elapsed  from  the  day  of  registration;  but  this  does  not 
apply  when  it  is  based  on  the  allegation  that  the  registration 
is  contrary  to  the  provisions  of  Art.  2,  paragraph  1,  Nos.  1-4, 
6,  7  and  11,  the  excepting  clause  of  Art.  11,  Art.  15,  paragraph  2 ; 
or  Arts.  32  or  33  of  the  Patent  Law,  which,  in  virtue  of  the  pro- 
visions of  Art.  24  hereof  apply  mutatis  mutandis. 

AET.  24.  The  provisions  of  Art.  13,  Arts.  16-30,  Art.  32, 
Art.  33,  Art.  45,  Art.  58,  paragraphs  1  and  3,  Art.  68,  Art.  71, 
Art.  72,  Art.  73,  paragraphs  1,  2  and  4,  Arts.  74-77,  Arts.  80-83, 
Arts.  86-105,  Art.  107,  Arts.  109-115,  Arts.  117-124  and  Art.  128 
of  the  Patent  Law  apply  mutatis  mutandis  to  trade  marks ;  but 
the  provisions  of  Art.  73,  paragraphs  1,  2  and  4,  and  Arts.  74-77 
(of  the  Patent  Law)  do  not  apply  mutatis  mutandis  to  applica- 
tions for  the  registration  of  a  renewal  of  the  period  of  duration 
of  trade  mark  rights. 

ART.  25.  A  person  who,  after  a  judgment  in  a  trial  declar- 
ing the  registration  to  be  void  has  become  finally  binding,  or  a 
court  judgment  has  been  rendered  to  the  same  effect,  has  used, 
in  good  faith,  from  prior  to  the  registration  of  a  demand  for 
retrial,  an  identical  or  similar  registered  trade  mark  widely 
known  among  dealers  and  consumers  for  identical  or  similar 
merchandise,  may  continue  the  use  of  such  registered  trade 
mark,  even  though  the  registration  thereof  has  been  declared 
void  on  the  ground  that  the  trade  mark  is  contrary  to  the 
provisions  of  Art.  2,  paragraph  1,  No.  9,  because  it  conflicts  with 
the  trade  mark  whose  registration  has  been  restored  as  a  result 
of  retrial.  The  same  applies  to  a  person  who  has  succeeded 
to  the  use  of  the  trade  mark  in  question  together  with  the 
business. 

The  provisions  of  Art.  9,  paragraph  2,  apply  mutatis  mu- 
tandis to  the  case  mentioned  in  the  foregoing  paragraph. 

ART.  26.    A  person  desiring  exclusively  to  use  a  mark  for 


JAPAN  491 

merchandise  in  connection  with  an  occupation  not  conducted 
for  profit  may  have  such  mark  registered. 

Marks  under  the  foregoing  paragraph  shall  be  deemed  to 
be  trade  marks  and  shall  be  governed  by  the  provisions  of  this 
law  relating  to  trade  marks. 

ART.  27.  A  juridical  person  organized  by  persons  in  the 
same  business,  or  by  business  men  intimately  connected,  with 
the  object  of  promoting  the  common  business  interests  of  the 
members  of  the  body,  may  have  its  mark  registered  as  a  cor- 
poration mark  in  order  to  enable  the  members  of  such  body  to 
make  exclusive  use  thereof  for  the  merchandise  connected  with 
their  business. 

Except  as  otherwise  provided  in  this  law,  corporation 
marks  shall  be  deemed  to  be  trade  marks  and  shall  be  governed 
by  the  provisions  of  this  law  relating  to  trade  marks. 

ART.  28.  A  juridical  person  desiring  to  obtain  registra- 
tion of  a  corporation  mark  in  accordance  with  the  provisions 
of  the  preceding  article  shall  provide  in  its  Articles  of  Associa- 
tion particulars  relating  to  the  use  of  such  corporation  mark 
and  obtain  the  approval  of  the  Director  of  the  Patent  Office. 
The  same  applies  when  such  particulars  are  changed. 

ART.  29.  A  claim  for  damages  for  an  infringement  of  a 
corporation  mark  right  also  includes  damages  done  to  the  mem- 
bers of  the  body. 

ART.  30.  In  case  a  juridical  person  referred  to  in  Art.  27 
is  amalgamated  or  divided,  if  the  right  arising  from  an  appli- 
cation for  the  registration  of  a  corporation  mark,  or  a  corpora- 
tion mark  right,  is  to  be  transferred  from  one  juridical  person 
to  another,  the  approval  of  the  Director  of  the  Patent  Office 
shall  be  obtained.  In  such  case  the  provisions  of  Art.  28  apply 
mutatis  mutandis. 

ART.  31.  In  any  of  the  cases  referred  to  in  any  of  the  fol- 
lowing numbers,  the  registration  of  a  corporation  mark  shall  be 
cancelled  by  a  trial: 

1)  If  a  juridical  person  has  caused  or  permitted  the  mem- 
bers to  use  the  corporation  mark  contrary  to  the  provisions  of 
the  Articles  of  Association  approved  by  the  Director  of  the 
Patent  Office  under  the  provisions  of  Art.  28  or  the  preceding 
article  (Art.  30),  or  connived  at  such  use; 

2)  If  a  juridical  person  has  caused  or  permitted  persons 
other  than  the  members  thereof  to  use  the  corporation  mark,  or 
connived  at  the  use  thereof  by  persons  other  than  the  members. 

A  juridical  person,  the  registration  of  whose  corporation 
mark  has  been  cancelled  under  the  provisions  of  the  preceding 
paragraph,  cannot  obtain  registration  of  an  identical  or  similar 


492  JAPAN 

corporation  mark  for  identical  or  similar  merchandise  for  a 
period  of  five  (5)  years  from  the  day  of  cancellation.  In  this 
case  the  provisions  of  Art.  16  and  Art.  22  apply  mutatis 
mutandis. 

ART.  32.  A  juridical  person  for  which  a  corporation  mark 
is  registered  shall,  at  the  time  of  registration,  pay  a  single 
lump  sum  of  one  hundred  yen  (Yen  100)  as  a  registration  fee 
for  each  matter. 

A  juridical  person  for  which  a  renewal  of  the  period  of 
duration  of  a  corporation  mark  right  is  registered  shall, 
at  the  time  of  registration,  pay  in  a  single  lump  sum  of  one 
hundred  and  fifty  yen  (Yen  150)  as  a  registration  fee  for  each 
matter. 

ART.  33.  The  provisions  of  the  preceding  six  (6)  articles 
(27-32)  apply  mutatis  mutandis  when  a  public  juridical  person 
desires  to  obtain  registration  of  a  corporation  mark  in  order  to 
cause  it  to  be  exclusively  used  by  the  business  men  within  its 
district  for  merchandise  connected  with  their  business. 

ART.  34.  Persons  falling  within  the  purview  of  any  one  of 
the  following  numbers  shall  be  punished  with  penal  servitude 
for  not  more  than  five  (5)  years,  or  a  fine  of  not  more  than  five 
thousand  yen  (Yen  5,000) : 

1)  Persons  who  have  used  for  identical  or  similar  mer- 
chandise a  trade  mark  identical  with,  or  similar  to,  a  regis- 
tered trade  mark  of  another  person,  or  who  have  delivered  or 
sold  such  merchandise  or  hold  it  in  their  possession  with  the 
object  of  delivering  or  selling  same ; 

2)  Persons  who  have  delivered  or  sold  a  trade  mark  iden- 
tical with,  or  similar  to,  a  registered  trade  mark  of  another 
person  with  the  object  of  causing  it  to  be  used  for  identical  or 
similar  merchandise,  or  who  hold  it  in  their  possession  with 
the  object  of  delivering  or  selling  same; 

3)  Persons  who,  with  the  object  of  using  it,  or  causing  it  to 
be  used  for  identical  or  similar  merchandise,  have  counterfeited 
or  imitated  a  registered  trade  mark  of  another  person ; 

4)  Persons  who,  with  the  object  of  delivering  or  selling 
it,  have  imported  (either  from  foreign  countries  or  from  the 
colonies)  identical  or  similar  merchandise  on  which  is  used  a 
trade  mark  identical  with,  or  similar  to,  a  registered  trade  mark 
of  another  person; 

5)  Persons  who,  with  the  object  of  using  it,  or  causing  it 
to  be  used,  for  identical  or  similar  merchandise,  have  imported 
(either  from  foreign  countries  or  from  the  colonies)  a  trade 
mark  identical  with,  or  similar  to,  a  registered  trade  mark  of 
another  person; 


JAPAN  493 

6)  Persons  who,  with  the  object  of  counterfeiting  or  imitat- 
ing a  registered  trade  mark  of  another  person,  or  of  causing 
the  same  to  be  counterfeited  or  imitated,  manufacture,  deliver, 
sell,  or  have  in  their  possession,  tools,  implements,  or  appli- 
ances required  for  the  purpose; 

7)  Persons  who  have,  with  reference  to  identical  or  similar 
merchandise,  used  a  mark  identical  with,  or  similar  to,  a  regis- 
tered trade  mark  of  another  person  in  advertisements  or  sign- 
boards or  in  hand-bills,  price-lists,  etc.,  or  trade  documents  used 
in  business. 

ART.  35.  Persons  falling  within  the  purview  of  any  one  of 
the  following  numbers  shall  be  punished  with  penal  servitude 
for  not  more  than  three  (3)  years  or  a  fine  of  not  more  than 
three  thousand  yen  (Yen  3,000) : 

1)  Persons  who,  by  means  of  a  fraudulent  act,  have  ob- 
tained registration  of  a  trade  mark  or  of  a  renewal  of  the  period 
of  duration  of  a  trade  mark  right,  or  obtained  a  judgment  in  a 
trial  or  court  judgment  to  the  same  effect; 

2)  Persons  who  have  used  on  goods  an  unregistered  trade 
mark  with  a  marking  for  a  registered  trade  mark,  or  with  an 
ambiguous  indication  liable  to  be  confounded  with  a  marking 
for  a  registered  trade  mark,  or  those  who  have  delivered  or  sold 
such  goods,  or  hold  them  in  their  possession  with  the  object  of 
delivering  or  selling  same; 

3)  Persons   who  have   used   in  advertisements,   on   sign 
boards  or  in  hand-bills,  price-lists,  etc.,  or  trade  documents  used 
in  business,  an  unregistered  trade  mark  with  a  marking  for  a 
registered  trade  mark,  or  with  an  ambiguous  indication  liable 
to  be  confounded  with  a  marking  for  a  registered  trade  mark. 

ART.  36.  If  a  lawfully  sworn  witness,  expert  or  interpreter, 
has  made  a  false  statement  before  the  Patent  Office,  or  before 
a  Court  or  public  office  requisitioned  by  the  Patent  Office,  he 
shall  be  punished  with  penal  servitude  of  from  three  (3)  months 
to  ten  (10)  years. 

If  a  person  who  has  committed  an  offence  under  the  fore- 
going paragraph  voluntarily  denounces  himself  before  a  de- 
cision by  an  examiner  or  judgment  in  a  trial  has  been  given  in 
the  case,  his  penalty  may  be  either  commuted  or  entirely  re- 
mitted. 

ART.  37.  If  a  witness,  expert  or  interpreter,  duly  sum- 
moned by  the  Patent  Office,  fails,  without  good  reason,  to  appear 
or  to  do  his  duty,  he  shall  be  punished  with  a  minor  fine  of  not 
exceeding  fifty  yen  (Yen  50). 

The  provisions  of  Arts.  206-208  of  the  Law  of  Procedure  in 
Non-Contentious  Matters  apply  mutatis  mutandis  to  fines  under 


494  JAPAN 

the  foregoing  paragraph. 

ABT.  38.  A  person  who,  without  being  a  Patent  Attorney, 
carries  on  the  business  of  representation  in  matters  to  be  done 
vis  a  vis  the  Patent  Office  in  connection  with  trade  marks  shall 
be  punished  with  penal  servitude  for  not  more  than  one  (1) 
year  or  a  fine  of  not  more  than  one  thousand  yen  (Yen  1,000). 

SUPPLEMENTABY  PROVISIONS 

ABT.  39.  The  date  of  enforcement  of  this  law  shall  be 
fixed  by  Imperial  Ordinance.* 

ABT.  40.  Unless  otherwise  provided  in  these  supplemen- 
tary provisions,  the  registration  of  trade  marks  and  of  renewal 
of  the  period  of  duration  of  trade  marks  rights,  dispositions  and 
proceedings  under  the  old  law  shall  be  deemed  to  have  been 
made  or  taken  under  this  law. 

The  foregoing  paragraph  also  applies  to  applications,  de- 
mands, and  other  proceedings  made  or  taken  under  the  old  law 
in  respect  of  trade  marks. 

ABT.  41.  Applications  for  the  registration  of  trade  marks 
or  of  renewal  of  the  period  of  duration  of  trade  mark  rights  and 
matters  relating  to  the  cancellation  of  registrations  of  trade 
marks  actually  pending  at  the  time  when  this  law  comes  into 
force  shall  be  dealt  with  in  accordance  with  the  old  law. 

With  regard  to  the  period  allowed  for  filing  an  objection 
to  a  judgment  in  a  trial  served  prior  to  the  enforcement  of  the 
Jaw,  the  old  law  governs. 

ABT.  42.  As  regards  the  registration  of  trade  marks  or 
of  renewal  of  the  period  of  duration  of  trade  mark  rights  under 
the  old  law,  even  when  the  registration  has  been  made  subse- 
quent to  the  enforcement  of  this  law,  the  provisions  of  Art.  11 
of  the  old  law  shall  remain  eif ective,  and  within  the  scope  of  the 
application  of  the  provisions  of  the  said  article  the  provisions 
of  the  old  law  mentioned  in  the  said  article  will  also  remain 
effective;  and  the  registration  shall  be  declared  void  by  trial 
only  when  it  falls  within  the  purview  of  the  provisions  of  the 
said  article.  In  such  case  the  provisions  of  paragraph  2  of  the 
Supplementary  Provisions  of  the  old  law  shall  remain  effective 
and,  within  the  scope  of  the  application  of  the  provisions  of  the 
said  paragraph,  the  provisions  of  the  old  law  mentioned  in  the 
said  paragraph  shall  also  remain  effective. 

ABT.  43.  A  trial  for  invalidity  under  the  foregoing  article 
on  the  ground  that  the  registration  is  contrary  to  the  pro- 
vision of  Art.  1  or  Art.  2,  No.  5,  of  the  old  law  cannot  be  de- 
manded when  five  (5)  years  have  elapsed  from  the  day  of  en- 

*  January  11.  1922. 


JAPAN  495 

forcement  of  this  law  in  regard  to  the  registration  of  a  trade 
mark  or  renewal  of  the  period  of  duration  of  a  trade  mark  right 
made  prior  to  the  enforcement  of  this  law. 

A  trial  for  invalidity  under  the  foregoing  article  on  the 
ground  that  the  registration  is  contrary  to  the  provisions  of 
Art.  2,  No.  8  or  9;  Art.  3,  or  Art.  4,  paragraph  2,  of  the  old 
law  cannot  be  demanded  when  three  (3)  years  have  elapsed 
from  the  day  on  which  the  registration  of  the  trade  mark  or 
of  renewal  of  the  period  of  duration  of  the  trade  mark  right 
was  published  in  the  Trade  Mark  Gazette. 

AST.  44.  Even  after  the  enforcement  of  this  law,  persons 
who  have  committed  an  offence  under  Art.  23  of  the  old  law 
prior  to  the  enforcement  of  this  law  shall  not  be  prosecuted 
except  upon  complaint. 


TEADE  MARK  LAW  NO.  25  OF  APRIL  2,  1909* 

ARTICLE  1.  A  person  who  desires  exclusively  to  use  a  trade 
mark  in  order  to  distinguish  goods  as  being  produced,  manu- 
factured, worked,  selected,  certified,  dealt  with  or  sold  by  him 
as  a  business,  may  have  such  trade  mark  registered  in  accord- 
ance with  this  law. 

In  order  to  be  registered,  a  trade  mark  must  consist  of 
characters,  devices,  signs  or  a  combination  thereof,  and  must 
have  a  specially  distinctive  appearance. 

In  registering  a  trade  mark  it  is  permissible  to  limit  the 
colours  which  are  to  be  applied  to  it. 

ABT.  2.    The  following  trade  marks  are  not  registered: 

1)  Those  which  contain  a  device  identical  with,  or  similar 
to,  the  Imperial  Chrysanthemum  Crest; 

2)  Those  which  are  identical  with,  or  similar  to,  the  national 
flag,  the  military  or  naval  flags,  or  an  Order,  a  medal  of  merit 
or  a  badge  or  to  a  foreign  national  flag ; 

3)  Those  as  to  which  there  is  an  apprehension  that  they 
may  be  prejudicious  to  public  order  or  morals  or  may  deceive 
the  public; 

4)  Those  which  are  identical  with,  or  similar  to,  a  mark 
generally  used  for  identical  goods ; 

5)  Those  which  are  identical  with,  or  similar  to,  a  mark 
known  to  the  public  as  belonging  to  another  person,  and  which 
are  to  be  used  for  identical  goods ; 

6)  Those  which  are  identical  with,  or  similar  to,  the  badge 

*See  Footnote  to  Japan:  Trade  Mark  Law  of  April  29,  1921. 


496  JAPAN 

of  the  Red  Cross  on  white  ground  or  to  the  denomination  or 
characters  of  "Bed  Cross"  or  "Geneva  Cross"; 

7)  Those  which  have  a  device  identical  with,  or  similar  to, 
a  medal,  diploma  or  certificate  awarded  at  an  exhibition  or  a 
competition  show  held  by  the  Government,  or  by  a  Do,  Fu  or 
Ken  or  sanctioned  by  the  Government,  or  at  an  exhibition  held 
in  a  foreign  country  by  the  Government,  or  at  an  international 
exhibition  held  in  a  foreign  country  with  the  permission  of  the 
Government;  but  this  does  not  apply  when  a  person  who  has 
received  such  a  medal,  diploma,  or  certificate,  desires  to  use  the 
same  as  a  part  of  his  trade  mark; 

8)  Those  showing  a  likeness,  the  name  or  the  trade  name 
of  another  person  or  the  denomination  of  a  juridical  person  or 
of  an  association,  unless  such  person  or  association  has  given 
permission ; 

9)  Those  which  are  identical  with,  or  similar  to,  a  trade 
mark  belonging  to  another  person,  in  regard  to  which  a  year 
has  not  yet  expired  since  its  registration  has  lost  its  validity; 
but  this  does  not  apply  to  those  which  are  identical  with,  or 
similar  to,  a  trade  mark  which,  before  its  registration  lost  its 
validity,  had  not  been  used  for  a  year  or  longer. 

AET.  3.  When  there  are  two  or  more  persons  each  of  whom 
has  a  right  to  obtain  registration  for  an  identical  or  similar 
trade  mark  to  be  used  for  identical  goods,  only  that  for  which 
application  has  been  made  first  shall  be  registered.  If  the  ap- 
plications are  of  the  same  day,  the  mutual  agreement  of  the 
parties  concerned  shall  govern,  and  if  the  parties  concerned  do 
not  agree,  none  will  be  registered. 

If  a  person  applies  for  the  registration  of  a  trade  mark 
identical  with,  or  similar  to,  that  which  he  in  good  faith  has 
used  for  identical  goods  before  the  first  day  of  July,  1899,  he 
may  obtain  such  registration,  irrespective  of  the  provisions  of 
Art.  2,  No.  5,  and  of  the  foregoing  paragraph. 

One's  own  trade  marks  similar  to  each  other,  which  are  to 
be  used  for  identical  goods,  are  registered  only  if  application 
is  made  for  their  registration  as  "associated  trade  marks." 

ART.  4.  The  right  arising  from  an  application  for  the  reg- 
istration of  a  trade  mark  can  be  transferred  only  together  with 
the  business. 

Succession  to  a  right  as  mentioned  in  the  foregoing  para- 
graph cannot  be  set  up  against  third  persons,  unless  the  change 
in  the  name  of  the  applicant  has  been  notified.  If  the  notifica- 
tions are  of  the  same  day,  the  mutual  agreement  of  the  parties 
concerned  shall  govern,  and  if  the  parties  concerned  do  not 


JAPAN  497 

agree,  none  of  them  can  set  up  the  succession  against  third 
persons. 

ABT.  11.  If  the  registration  of  a  trade  mark  or  the  re- 
newal of  the  period  of  duration  of  a  trade  mark  right  is  in  con- 
travention of  Arts.  1-3  and  4,  paragraph  2  of  Art.  22,  it  shall  he 
declared  invalid  by  trial. 

ABT.  22.  An  alien  who  has  no  domicile  or  no  place  of 
business  within  the  Empire  cannot  enjoy  a  trade  mark  right 
or  a  right  relating  thereto,  unless  there  is  a  provision  to  that 
effect  in  a  Treaty  or  a  similar  Convention. 

If  there  are  in  a  Treaty  or  a  similar  Convention  special 
provisions  with  regard  to  trade  marks,  such  provisions  shall 
govern. 

ABT.  23.  A  person  who  comes  under  any  of  the  following 
cases  shall  be  punished  by  penal  servitude  for  not  more  than  five 
years,  or  by  a  major  fine  of  not  more  than  one  thousand  yen : 

1)  A  person  who  uses  for  identical  goods  the  registered 
trade  mark  of  another  person,  or  vessels,  or  wrappings,  etc., 
bearing  such  trade  mark,  or  who  delivers  or  sells  such  goods 
or  has  them  in  his  possession  with  intention  to  deliver  or  sell 
them; 

2)  A  person  who,  with  intention  to  have  them  used  for  iden- 
tical goods,  delivers  or  sells  the  registered  trade  mark  of  another 
person,  or  vessels,  or  wrappings,  etc.,  bearing  such  trade  mark, 
or  who  has  them  in  his  possession  with  intention  to  deliver  or 
sell  them; 

3)  A  person  who,  with  intention  to  use  it  or  to  have  it 
used  for  identical  goods,  counterfeits  or  imitates  the  registered 
trade  mark  of  another  person; 

4)  A  person  who,  with  intention  to  have  it  used  for  identical 
goods,  delivers  or  sells  a  counterfeited  or  imitated  trade  mark, 
or  who  uses  it  for  identical  goods ; 

5)  A  person  who  delivers  or  sells  identical  goods  for  which 
a  counterfeited  or  imitated  trade  mark  is  used,  or  who  has  such 
goods  in  his  possession  with  intention  to  deliver  or  sell  them ; 

6)  A  person  who,  with  intention  to  deliver  or  sell  them, 
imports  goods  for  which  a  trade  mark  identical  with,  or  similar 
to,  the  registered  trade  mark  of  another  person  is  used,  or  who 
delivers  or  sells  such  goods  or  has  them  in  his  possession  with 
intention  to  deliver  or  sell  them ; 

7)  A  person  who,  with  intention  to  counterfeit  or  imitate 
the  registered  trade  mark  of  another  person,  manufactures, 
delivers,  sells  or  has  in  his  possession  implements  serving  for 


498  JAPAN 

such  purpose; 

8)  A  person  who  in  advertisements,  on  sign  boards,  in  hand- 
bills, price-lists,  or  any  other  commercial  papers  used  in  busi- 
ness, makes  use  for  identical  goods  of  a  trade  mark  identical 
with,  or  similar  to,  the  registered  trade  mark  of  another  person. 

The  offences  mentioned  in  the  foregoing  paragraph  are 
prosecuted  on  complaint. 

•9  •  •  •  *  •  •  •  •  • 

SUPPLEMENTARY  PROVISIONS 

As  to  trade  marks  registered  under  the  old  law  the  pro- 
visions of  Art.  2,  No.  6  to  No.  8,*  of  this  law  dp  not  apply  for 
the  time  of  their  duration ;  and  the  periods  mentioned  in  Art.  9f 
are  computed  from  the  day  when  this  law  takes  effect. 


PATENT  LAW  OF  APRIL  29,  1921J 

•  »•••••••• 

ARTICLE  13.  The  calculation  of  legal  or  appointed  terms 
(periods  of  time)  under  this  law,  or  ordinances  issued  on  the 
basis  of  this  law,  shall  be  governed  by  the  following  provisions, 
namely : 

1)  The  first  day  of  a  term  shall  not  be  reckoned  in,  except 
the  term  begins  at  0  a.  m.  (immediately  after  12  p  m.  on  the 
previous  day) ; 

2)  If  a  term  is  fixed  by  the  month  or  by  the  year,  the 
calendar  shall  govern;  but  if  the  term  does  not  begin  to  run  at 
the  beginning  of  a  month  or  year,  it  shall  mature  on  the  day 
next  preceding  the  day  falling  in  the  last  month  or  year  and 
corresponding  to  the  day  from  which  it  is  calculated.    If  there 
is  no  such  corresponding  day  in  the  last  month,  however,  the 
term  shall  mature  on  the  last  day  of  that  month. 

If  the  last  day  of  a  legal  or  appointed  term  for  an  applica- 
tion, a  demand,  or  any  other  proceeding  relating  to  a  patent 
falls  on  a  Sunday  or  a  general  holiday,  the  day  next  following 
that  day  shall  be  the  last  day  of  the  term. 

ART.  16.  Unless  otherwise  provided  by  ordinance,  no  per- 
son who  is  neither  domiciled  nor  resident  within  the  Empire 
can  make  an  application  or  a  demand  or  take  any  other  pro- 

*Art.  2,  Nos.  6,  7  and  8,  of  the  Law  of  1909  in  question,  are  essentially  the  same 
as  Art.  2,  Nos.  3,  7  and  5,  respectively,  of  the  Law  of  1921 « 
fEssentially  the  same  as  Art.  14  of  the  Law  of  1921. 
jSee  Footnote  to  Japan:  Trade  Mark  Law  of  April  29,  1921. 


JAPAN  499 

ceeding  in  regard  to  a  patent,  or  assert  a  patent  right  or  any 
other  right  relating  to  a  patent  except  through  a  representative. 

In  addition  to  powers  specially  granted,  a  representative 
applying,  demanding  or  asserting  under  the  provisions  of  the 
foregoing  paragraph  represents  his  principal  in  regard  to  any 
proceeding  under  this  law  or  any  ordinance  issued  on  the  basis 
of  this  law  as  well  as  in  any  civil  action,  private  criminal  action 
and  criminal  accusion. 

The  appointment  of,  or  a  change  in,  a  representative  of  a 
patent  or  of  a  person  who  has  a  registered  right  in  a  patent, 
and  who  takes  a  proceeding  or  makes  an  assertion  under  the 
provisions  of  paragraph  1,  or  his  powers  of  representation  or 
any  change  in  or  the  extinction  of  the  same  cannot  be  set  up 
against  third  persons  unless  registered. 

ART.  17.  The  appointment  of,  or  a  change  in,  a  represen- 
tative of  a  person  making  an  application  or  demand  or  any 
other  proceeding  relating  to  a  patent,  but  who  is  not  a  repre- 
sentative contemplated  in  paragraph  3  of  the  foregoing  article, 
or  his  powers  of  representation  or  change  in,  or  the  extinction 
of,  the  same,  cannot  be  set  up  against  the  Patent  Office  unless 
it  be  notified  to  the  Patent  Office. 

ART.  18.  If  there  are  two  or  more  representatives  in  re- 
spect to  a  patent,  they  represent  their  principal  jointly  and/or 
severally  as  against  the  Patent  Office. 

ART.  19.  Should  the  Director  of  the  Patent  Office  consider 
a  representative  relating  to  a  patent  as  unfit  to  act  as  such,  he 
may  order  that  another  representative  be  appointed. 

Should  the  Director  of  the  Patent  Office  or  a  presiding 
patent  judge  consider  that  a  party,  or  an  intervener,  or  a 
person  objecting  to  a  patent,  or  the  representative  of  any  of 
such  persons  is  not  qualified  to  carry  out  proceedings  or  make 
statements,  he  may  order  that  the  party  be  represented  by  a 
patent  agent. 

Any  act  done  as  against  the  Patent  Office,  after  an  order 
has  been  made  under  the  two  preceding  paragraphs,  either  by 
the  representative  referred  to  in  paragraph  1,  or  the  party, 
intervener,  or  person  objecting  to  a  patent  or  representative 
referred  to  in  the  foregoing  paragraph  may  be  declared  valid. 

ART.  20.  Representation  as  a  business  in  matters  to  be 
done  as  against  the  Patent  Office  can  only  be  undertaken  by 
patent  agents. 

ART.  21.  Two  or  more  persons  who  conjointly  make  an 
application  or  demand  or  take  any  other  proceeding  in  regard 
to  a  patent,  or  the  co-owners  of  a  patent  right,  are  represented 
by  each  other  as  against  the  Patent  Office,  except  when  a  special 


500  JAPAN 

representative  has  been  appointed  and  the  Patent  Office  has 
been  notified  of  the  fact. 

The  provisions  of  Art.  17  apply  mutatis  mutandis  to  the 
representative  referred  to  in  the  proviso  of  the  foregoing  para- 
graph. 

ART.  22.  In  case  a  patentee  is  neither  domiciled  nor  resi- 
dent in  the  Empire,  the  domicile  or  residence  of  his  representa- 
tive under  Art.  16,  paragraph  2,  or,  if  there  is  no  representative, 
the  seat  of  the  Patent  Office  shall  be  deemed  the  *  *  seat  of  prop- 
erty" in  the  sense  of  Art.  17  of  the  Code  of  Civil  Procedure. 

ABT.  23.  For  the  benefit  of  a  person  residing  in  a  foreign 
country  or  at  a  place  difficult  of  access,  the  Director  of  the 
Patent  Office  may,  either  ex  officio  or  on  application,  extend  any 
legal  term  (period)  for  a  proceeding  to  be  taken  as  against 
the  Patent  Office. 

ABT.  24.  If  a  person  who  has  made  an  application  or  de- 
mand, or  taken  any  other  proceeding,  has  omitted  to  observe 
any  appointed  time  respecting  any  subsequent  act  connected 
therewith,  or  has  omitted  to  pay  in  patent  fees  to  be  paid  at  the 
time  of  obtaining  registration,  the  Director  of  the  Patent  Office 
may,  unless  otherwise  provided  by  this  law,  declare  invalid 
such  application,  demand  or  other  proceeding. 

In  case  an  application  or  demand  or  any  other  proceeding 
has  been  declared  invalid  under  the  provisions  of  the  foregoing 
paragraph,  if  it  is  deemed  that  the  neglect  of  the  term  has  been 
caused  by  a  pardonable  impediment,  the  Director  of  the  Patent 
Office  or  the  presiding  patent  judge  may  release  the  party  from 
the  consequences  of  the  neglect  on  demand  within  fourteen  (14) 
days  from  the  day  on  which  such  impediment  has  ceased  to 
exist  and  within  one  (1)  year  after  the  expiration  of  the  term 
in  question. 

ABT.  25.  In  case  a  legal  term  has  been  neglected  by  a 
natural  calamity  or  any  other  unavoidable  event,  the  Director 
of  the  Patent  Office  or  the  presiding  patent  judge  may  release 
the  party  from  the  consequences  of  the  neglect  on  demand  within 
fourteen  days  from  the  day  on  which  the  impediment  has  ceased 
to  exist  and  within  one  (1)  year  after  the  expiration  of  the 
term  in  question ;  but  this  shall  not  apply  to  the  term  for  making 
an  objection  to  a  patent  under  Art.  74. 

ABT.  26.  As  regards  the  time  when  the  transmission  of 
papers  and  other  articles  to  be  transmitted  to  the  Patent  Office 
takes  effect,  it  shall  be  provided  by  ordinance. 

ABT.  27.  The  effect  of  any  proceeding  taken  by  or  against 
a  patentee  or  a  person  having  a  right  relating  to  a  patent  under 
this  law  or  any  ordinance  issued  against  this  law  shall  extend  to 


JAPAN  501 

the  successor  to  such  patent  right  or  right  relating  to  a  patent. 

ART.  28.  In  case  a  patent  right  or  a  right  relating  to  a 
patent  has  been  transferred  while  a  case  is  pending  in  the  Patent 
Office,  the  proceedings  may  be  continued  as  against  the  suc- 
cessor. 

ART.  29.  Apart  from  what  is  provided  in  this  law,  pro- 
visions for  the  interruption  or  stay  of  proceedings  pending  in 
the  Patent  Office  or  continuation  of  proceedings  interrupted  or 
stayed  shall  be  made  by  ordinance. 

ART.  30.  Any  person  who  in  respect  to  a  patent  desires  to 
have  a  certificate,  a  duplicate  copy  of  Letters  Patent,  a  copy  of 
papers  or  drawings  made,  or  to  inspect  or  copy  papers,  may 
apply  to  the  Director  of  the  Patent  Office,  but  such  application 
will  not  be  granted  by  the  Director  of  the  Patent  Office  in  the 
case  of  matters  which  he  considers  require  secrecy. 

ART.  32.  No  alien  who  is  neither  domiciled  nor  resident  in 
the  Empire  can  enjoy  a  patent  right  or  a  right  relating  to  a 
patent  unless  there  be  provisions  (to  the  contrary)  in  a  Treaty 
or  something  similar  thereto. 

ART.  33.  If,  in  regard  to  patents,  there  are  special  pro- 
visions in  a  Treaty  or  something  similar  thereto,  such  provi- 
sions shall  govern. 

ART.  45.  The  transfer,  extinction  by  surrender  (waiver), 
or  restriction  respecting  the  disposal  of  a  patent  right  or  the 
creation,  transfer,  alteration,  extinction,  or  restriction  respect- 
ing the  disposal  of  a  right  of  pledge  whose  subject  is  a  patent 
right,  cannot  be  set  up  against  third  persons  unless  it  has  been 
registered. 

.......... 

ART.  58.  When  a  patent  has  been  invalidated,  the  patent 
right  is  considered  not  to  have  existed  ab  initio;  but  in  case  a 
patent  has  been  invalidated  under  the  provisions  of  paragraph 
1,  No.  5,  of  the  foregoing  article,  the  patent  right  is  considered 
not  to  have  existed  as  from  the  time  when  the  patent  came  under 
the  said  number. 

•  ••••**•»• 

"When  a  patent  has  been  cancelled  or  a  right  of  working 
under  the  provisions  of  Art.  42  has  been  cancelled,  the  patent 
right  or  the  right  of  working  loses  its  effect  for  the  future. 

ART.  68.    Any  patent  fee  already  paid  will  not  be  refunded. 
ABT.  71.    The  provisions  of  Art.  91  shall  apply  mutatis 


502  JAPAN 

mutandis  to  the  exclusion  of  Examiners  from  the  participation 
in  examination. 

ART.  72.  When  the  Examiner  finds  that  the  application 
should  be  refused,  the  reason  for  refusal  shall  be  indicated  to 
the  applicant  and  the  latter  shall  be  given  an  opportunity  for 
presenting  a  written  opinion  within  a  period  to  be  specified  (by 
the  Examiner). 

ABT.  73.  When  the  Examiner  finds  no  reason  for  refusing 
the  application,  he  shall  give  a  decision  that  the  application 
shall  be  published. 

When  a  decision  has  been  given  under  the  provisions  of 
the  preceding  paragraph,  the  Patent  Office  shall  publish  the 
application  by  inserting  in  the  Patent  Gazette  the  date  of  the 
application,  the  full  name  of  the  inventor,  the  full  name  or 
denomination  and  domicile  of  the  applicant,  and  the  gist  of 
the  application. 

At  the  same  time  as  the  publication  of  the  application,  the 
Patent  Office  shall  submit  to  public  inspection  the  documents 
of  application  and  the  matters  necessary  thereto  at  the  Patent 
Office  and  also  at  other  places  to  be  specified  by  ordinance. 

ART.  74.  In  case  an  application  has  been  published,  any 
person  may  within  two  (2)  months  from  the  day  of  the  publica- 
tion of  the  application  state  an  objection  to  a  patent  to  the 
Patent  Office. 

An  objection  to  a  patent  shall  be  made  by  presenting  a 
statement  of  objection  to  the  patent  with  its  reasons  given 
therein. 

Any  person  interested  may  intervene  in  an  objection  to  a 
patent  up  to  the  time  when  such  objection  to  a  patent  should 
have  been  decided  upon. 

To  intervention  in  objections  to  a  patent  the  provisions  re- 
lating to  intervention  in  trials  apply  mutatis  mutandis. 

ART.  75.  When  an  objection  to  a  patent  has  been  made, 
the  Examiner  shall  forward  a  duplicate  of  the  statement  of 
objection  to  the  patent  to  the  applicant,  and  give  him  an  oppor- 
tunity to  present  a  reply  thereto  within  a  period  to  be  specified 
(by  the  Examiner). 

The  Examiner  shall,  subsequent  to  the  lapse  of  the  period 
allowed  by  paragraph  1  of  the  foregoing  article  for  making 
an  objection  to  the  patent  and  the  period  specified  in  the  fore- 
going paragraph,  give  a  decision  upon  the  objection  and  decide 
at  the  same  time  whether  a  patent  shall,  or  shall  not,  be  given 
in  respect  of  the  application. 


JAPAN  503 

The  decision  upon  an  objection  shall  be  accompanied  by 
reasons. 

No  complaint  may  be  made  against  a  decision  upon  an 
objection  to  a  patent. 

If  it  should  be  found  necessary  as  a  result  of  an  objection 
made  to  a  patent,  the  Examiner  may  order  the  specification  or 
drawings  of  the  patented  invention  to  be  amended. 

ART.  76.  As  regards  the  costs  of  taking  evidence  incurred 
in  connection  with  an  objection  to  a  patent,  the  provisions  for 
costs  relating  to  trials  shall  apply  mutatis  mutandis. 

ART.  77.  The  Examiner  shall  decide,  in  case  there  is  no 
opposition  to  a  patent. 

•  ••••*•••• 

ART.  80.  The  provisions  of  Art.  100  and  Art.  118,  para- 
graph 1,  shall  apply  mutatis  mutandis  to  examination. 

ART.  81.  A  decision  (of  an  Examiner)  shall  be  accom- 
panied by  reasons. 

ART.  82.  In  addition  to  the  provisions  of  this  law,  pro- 
visions relating  to  documents  concerning  an  examination  which 
are  to  be  served  and  to  service  (of  documents)  shall  be  deter- 
mined by  ordinance. 

ART.  83.  If  it  be  necessary  to  do  so  in  a  civil  or  criminal 
action,  the  proceedings  may  be  suspended  by  the  Court  until  a 
decision  that  a  patent  shall  be  given  or  refused  shall  have  be- 
come finally  binding. 

ART.  86.    A  demand  for  a  trial  shall  be  presented  in  writing. 

Such  demand  shall  state  a  definite  application  and  reasons. 

ART.  87.  If  a  demand  for  a  trial  is  clearly  impermissible 
or  contrary  to  the  formalities  required  by  laws  and  ordinances, 
or  if  it  has  been  made  after  the  lapse  of  due  time,  the  presiding 
judge  shall  immediately  dismiss  it  by  a  ruling. 

In  a  ruling  under  the  foregoing  paragraph,  reasons  shall 
be  given. 

Any  person  dissatisfied  with  a  ruling  under  paragraph  1 
may  make  immediate  complaint. 

To  immediate  complaint,  the  provisions  of  the  Code  of 
Civil  Procedure  relating  to  immediate  complaint  shall  apply 
mutatis  mutandis. 

ART.  88.  When  a  demand  for  a  trial  has  been  accepted, 
the  presiding  judge  shall  serve  a  duplicate  copy  thereof  upon 
the  defendant  and  give  the  latter  an  opportunity  for  presenting 
a  written  reply  within  a  period  to  be  specified  (by  the  presiding 
judge).  When  such  a  reply  has  been  received,  a  duplicate  copy 
thereof  shall  be  served  upon  the  other  party. 


504  JAPAN 

In  a  trial,  either  party  may  be  directed  to  present  a  reply 
to  a  document  presented  by  the  other  party,  or  questions  may 
be  put  to  the  parties  in  writing,  requiring  them  to  present  a 
written  opinion  thereon. 

ART.  89.  A  trial  is  conducted  by  three  patent  judges  con- 
sulting together. 

The  consultation  is  decided  by  a  majority  vote. 

The  senior  among  the  judges  shall  be  the  presiding  judge. 

The  presiding  judge  manages  affairs  relating  to  the  case 
under  trial. 

ART.  90.  Judges  are  nominated  by  the  Director  of  the 
Patent  Office  for  each  case  to  be  tried. 

If  any  judge  is  prevented  from  participating  in  a  trial,  his 
nomination  shall  be  cancelled  and  another  judge  nominated  in 
his  place. 

ABT.  91.    A  judge  is  excluded  from  participation  in  a  trial : 

1)  If  he  himself  is  a  party,  an  intervener,  or  a  party  ob- 
jecting to  patent  in  the  case  under  trial ; 

2)  If  he  is  a  relative  to  any  person  named  in  the  preceding 
number  or  to  his  or  her  spouse ; 

3)  If  he  is  the  legal  representative,  supervisor  of  guardian- 
ship or  curator  of  any  persons  named  in  No.  1 ; 

4)  If  he  has  acted  as  representative  to  any  person  named 
in  No.  1  in  the  matter ; 

5)  If  he  has  acted  as  witness  or  expert  witness  in  the 
matter ; 

6)  If  he  has,  either  as  Examiner  or  Judge,  participated  in 
a  decision  or  patent  judgment  in  the  matter ; 

7)  If  he  is  directly  interested  in  the  matter. 

ABT.  92.  If  a  judge  is  excluded  from  participation  in  a 
trial  in  accordance  with  the  provisions  of  the  foregoing  para- 
graph, or  if  it  is  apprehended  that  he  may  make  a  biased  trial, 
he  may  be  refused  by  any  party  or  intervener. 

ART.  93.  A  motion  of  refusal  of  a  judge  on  the  ground 
that  he  is  to  be  excluded  from  participation  in  the  trial  under 
the  provisions  of  Art.  91  may  be  made  at  any  stage  of  the  trial. 

No  motion  of  refusal  of  a  judge  on  the  ground  that  it  is 
apprhended  that  he  may  make  a  biased  trial  can  be  made  by  any 
party  or  intervener  after  he  has  made  an  application  or  made 
a  statement  against  an  application  by  the  other  party  without 
claiming  a  cause  of  refusal  which  has  come  to  his  knowledge. 

ART.  94.  A  motion  of  refusal  may  be  made  either  in  writ- 
ing or  orally. 

Prima  facie  evidence  shall  be  given  of  a  cause  of  refusal. 
The  statement  made  in  discharge  of  his  official  functions  by  the 


JAPAN  505 

judge  against  whom  a  motion  of  refusal  has  been  made  may  be 
used  as  such  prima  facie  evidence. 

As  regards  a  motion  of  refusal  of  a  judge,  on  the  ground 
that  it  is  apprehended  that  he  may  make  a  biased  trial,  made 
by  a  party  or  intervener  after  he  has  made  an  application  or 
statement,  prima  facie  evidence  shall  be  given  of  how  the  cause 
of  refusal  has  come  into  existence  or  knowledge  thereof  has  been 
obtained  subsequent  to  such  application  or  statement. 

ABT.  95.  When  a  motion  of  refusal  has  been  made,  whether 
it  is,  or  is  not,  to  be  permitted  is  decided  by  a  trial  by  a  judge 
other  than  the  judge  against  whom  the  motion  of  refusal  has 
been  made,  and  who  has  been  nominated  by  the  Director  of  the 
Patent  Office. 

In  a  ruling  under  the  provisions  of  the  foregoing  para- 
graphs reasons  shall  be  given. 

No  dissatisfaction  can  be  stated  against  a  ruling  under  the 
provisions  of  paragraph  1. 

ART.  96.  No  judge  against  whom  a  motion  of  refusal  has 
been  made  may  do  any  act  in  the  case  under  trial  until  it  has 
been  decided  whether  such  motion  shall  be  permitted;  but  this 
does  not  apply  to  acts  which  admit  of  no  delay  in  the  case  of  a 
motion  of  refusal  on  the  ground  that  it  is  apprehended  that  a 
biased  trial  may  be  made. 

ART.  97.  Trial  for  invalidity  under  Art.  84,  paragraph  1, 
No.  1,  is  conducted  orally,  but  the  presiding  judge  may,  either 
on  application  or  ex  officio,  conduct  it  in  writing. 

Oral  trials  are  held  in  public,  but  this  does  not  apply  if 
there  is  apprehension  of  such  course  being  prejudicial  to  public 
interests  or  morals. 

ART.  98.  Any  person  interested  may  intervene  in  a  trial 
until  such  trial  is  brought  to  a  conclusion. 

ART.  99.  An  application  re  intravention  shall  be  made  by 
presenting  a  written  application  re  intervention. 

When  a  written  application  has  been  accepted,  the  presiding 
judge  shall  serve  the  same  on  the  parties  and  interveners  and 
give  them  an  opportunity  for  raising  an  objection  thereto  within 
a  period  to  be  specified  (by  the  presiding  judge). 

When  an  application  re  intervention  has  been  made,  whether 
it  is  to  be  permitted  or  refused  shall  be  decided  by  trial. 

The  provisions  of  paragraphs  2  and  3  of  Art.  95  apply 
mutatis  mutandis  to  rulings  under  the  provisions  of  the  fore- 
going paragraph. 

ART.  100.  In  a  trial  evidence  may  be  examined  either  on 
the  application  or  ex  officio. 

Examination  of  evidence  under  the  foregoing  paragraph 


506  JAPAN 

may  be  entrusted  to  the  Local  Court  of  the  place  where  the 
necessary  work  is  to  be  done,  or  any  other  public  office  exercis- 
ing the  functions  of  a  Local  Court. 

The  provisions  of  the  Code  of  Civil  Procedure  relating  to 
examination  apply  mutatis  mutandis  to  the  examination  of  evi- 
dence under  the  provisions  of  the  two  foregoing  paragraphs, 
but  as  regards  the  examination  of  evidence  at  the  Patent  Office 
no  fine  can  be  imposed,  nor  may  any  production  (arrest)  of 
persons  be  ordered. 

ABT.  101.  Even  though  parties  or  interveners  do  not  take 
proceedings  within  a  legal  or  appointed  period  or  do  not  appear 
at  a  hearing,  the  presiding  judge  may  go  on  with  the  trial. 

ABT.  102.  A  demand  for  a  trial  may  be  withdrawn  before 
the  examination  has  been  brought  to  a  termination,  but  after  a 
written  reply  has  been  presented  the  consent  of  the  other  party 
is  required. 

ART.  103.  In  a  trial,  examination  may  be  made  even  into 
reasons  not  stated  or  those  withdrawn  by  a  party  or  an  inter- 
vener.  In  such  case  the  party  or  intervener  shall  be  given  an 
opportunity  of  stating  an  opinion  on  such  reasons  within  a 
period  to  be  specified  (by  the  presiding  judge). 

ART.  104.  The  trial  judge  may  combine  the  examination 
or  judgments  in  the  case  of  two  or  more  trials  respecting  which 
both  or  either  of  the  parties  are  the  same. 

In  case  examinations  have  been  combined  under  the  pro- 
visions of  the  foregoing  paragraph,  the  trial  judge  may  again 
make  separate  examinations  or  give  separate  judgments. 

ART.  105.  Unless  otherwise  provided,  a  trial  comes  to  an 
end  by  judgment. 

In  a  judgment  under  the  foregoing  paragraph  reasons  shall 
be  given. 

When  the  case  is  mature  for  giving  judgment,  the  presid- 
ing judge  shall  notify  the  parties  and  interveners  of  the  con- 
clusion of  the  examination. 

If  necessary,  the  presiding  judge  may,  either  on  application 
or  ex  officio,  reopen  examination  even  after  the  conclusion  of 
the  examination  has  been  notified  under  the  provisions  of  the 
foregoing  paragraph. 

A  judgment  shall  be  given  within  twenty  (20)  days  from 
the  day  on  which  notice  of  the  conclusion  of  the  examination 
has  been  issued. 

•  •••••*••• 

ART.  107.  The  provisions  of  Art.  82  apply  mutatis  mutan- 
dis to  trials. 


JAPAN  507 

ART.  109.  Any  person  who  is  dissatisfied  with  a  decision 
(in  an  examination)  or  a  patent  judgment  (judgment  in  a  trial) 
given  against  him  may  demand  an  appeal  trial  within  thirty  (30) 
days  on  which  the  decision  or  judgment  has  been  passed;  but 
this  does  not  apply  to  the  judgment  re  the  amount  of  compen- 
sation under  the  provisions  of  Art.  106. 

AST.  110.  The  provisions  of  Arts.  86-108  apply  mutatis 
mutandis  to  appeal  trials,  but  the  judges  consulting  together 
shall  be  either  three  (3)  or  five  (5)  in  number,  and  the  words 
"  party  or  intervener"  in  Art.  92-94  and  Art.  101  shall  be  re- 
placed by  the  words  "  party,  intervener  or  party  objecting  to 
the  patent." 

ART.  111.  In  an  appeal  trial,  the  grounds  for  the  demand 
for  a  trial  may  be  changed,  or  new  facts  or  means  of  proof 
produced. 

ART.  112.  In  an  appeal  trial,  judgment  shall  be  delivered 
in  the  matter  in  question. 

ART.  113.  The  provisions  of  Art.  72  apply  mutatis  mutan- 
dis where,  in  an  appeal  trial  against  a  decision  of  refusal,  any 
reason  of  refusal  differing  from  those  on  which  the  said  decision 
is  founded  has  been  discovered. 

The  provisions  of  Arts.  73-79  apply  mutatis  mutandis  when 
the  demand  for  an  appeal  trial  against  a  decision  of  refusal  is 
found  reasonable;  but  if  the  application  respecting  which  a 
patent  is  to  be  granted  has  already  been  published,  judgment 
shall  be  given  without  publishing  the  application  again. 

ART.  114.  In  an  appeal  trial  against  a  decision  of  refusal 
the  decision  may,  the  provisions  of  the  two  foregoing  articles 
notwithstanding,  be  quashed  and  judgment  given  to  the  effect 
that  the  matter  shall  be  again  subjected  to  examination. 

In  case  judgment  has  been  given  under  the  provisions  of 
the  foregoing  paragraph,  the  reasons  on  which  such  quashing 
in  based  bind  examiners  so  far  as  the  particular  matter  is  con- 
cerned. 

ART.  115.  If  any  person  against  whom  a  judgment  in  an 
appeal  trial  has  been  rendered  is  dissatisfied  with  such  judg- 
ment, he  may,  within  thirty  (30)  days  from  the  day  on  which 
the  judgment  has  been  served  on  him,  bring  an  action  before 
the  Supreme  Court,  but  this  only  on  the  ground  that  the  judg- 
ment is  in  contravention  of  a  law  or  ordinance. 

To  the  actions  and  judgments  under  the  provisions  of  the 
foregoing  paragraph,  the  provisions  relating  to  the  second  ap- 
peals in  civil  actions  and  judgments  thereon  apply  mutatis 
mutandis. 

The  reasons  on  the  basis  of  which  a  patent  judgment  has 


508  JAPAN 

been  quashed  by  a  judgment  of  the  Supreme  Court  bind  the 
Patent  Office  so  far  as  the  particular  matter  is  concerned. 

ART.  117.  If  a  finally  binding  patent  judgment  or  a  court 
judgment  relating  to  the  effect  of  a  patent  or  a  permission  under 
Art.  53  or  the  scope  of  a  patent  right  has  been  registered,  no 
person  whosoever  may  demand  an  identical  trial  on  the  basis 
of  identical  facts  and  identical  evidence. 

ART.  118.  If  it  be  necessary  to  do  so  in  a  trial  or  an  appeal 
trial  the  proceedings  may  be  suspended  until  the  completion 
of  the  proceedings  in  any  civil  or  criminal  action. 

If  it  be  necessary  to  do  so  in  a  civil  or  criminal  action,  the 
Court  may  suspend  the  proceedings  until  a  patent  judgment 
has  become  finally  binding  or  a  court  judgment  rendered  in 
respect  to  a  patent. 

ART.  119.  Unless  otherwise  provided,  the  incidence  of  the 
costs  of  a  trial,  an  appeal  trial  or  an  action  shall  be  determined 
by  the  judgment  in  the  main  case. 

The  amount  of  the  costs  of  a  trial,  an  appeal  trial  or  an 
action  shall,  on  demand,  be  determined  by  the  Director  of  the 
Patent  Office. 

As  regards  the  incidence  and  amount  of  costs,  these  shall 
be  provided  by  Imperial  Ordinance. 

ART.  120.  A  ruling  relating  to  the  amount  of  the  costs  of 
a  trial,  an  appeal  trial  or  an  action,  or  a  finally  binding  ruling 
and  patent  judgment  relating  to  the  amount  of  compensation 
under  this  Law  are,  in  regard  to  compulsory  execution,  consid- 
ered as  a  " title  of  obligation"  under  the  provisions  of  Art.  559, 
No.  1,  of  the  Code  of  Civil  Procedure,  but  an  executory  exempli- 
fication thereof  shall  be  granted  by  an  official  of  the  Patent 
Office. 

ART.  121.  Any  matter  which  has  been  terminated  by  a 
finally  binding  patent  or  a  court  judgment  rendered  in  the  fol- 
lowing trial,  appeal  trial  or  action  may  be  re-tried  on  demand 
for  cancellation  or  on  demand  for  revivor: 

1)  Trial  relating  to  the  validity  of  a  patent  or  a  permis- 
sion under  Art.  53,  the  scope  of  a  patent  right  or  the  acquisition 
of  a  right  of  working; 

2)  Appeal  trial  against  a  judgment  in  a  trial  under  the 
preceding  number ; 

3)  Action  against  a  judgment  in  an  appeal  trial  under  the 
preceding  number. 

The  provisions  of  Art.  468  of  the  Code  of  Civil  Procedure 
apply  mutatis  mutandis  to  the  demand  for  cancellation,  and 


JAPAN  509 

those  of  Arts.  469  and  470  of  the  same  Code  to  the  demand  for 
revivor. 

ABT.  122.  Re-trial  may  only  be  demanded  within  thirty 
(30)  days  from  the  day  on  which  the  party  obtained  knowledge 
of  the  ground  of  dissatisfaction. 

If  the  party  has  obtained  knowledge  of  the  ground  of  dis- 
satisfaction before  the  patent  judgment  becomes  finally  binding 
or  before  the  Court  judgment  is  rendered,  the  period  specified 
in  the  foregoing  paragraph  is  calculated  from  the  day  next  fol- 
lowing the  day  on  which  the  patent  judgment  has  become  finally 
binding  or  the  Court  judgment  has  been  rendered. 

In  case  a  re-trial  is  demanded  on  the  ground  that  in  the 
proceedings  in  a  trial,  an  appeal  trial  or  an  action,  the  party 
was  not  represented  in  accordance  with  the  provisions  of  law, 
the  period  mentioned  in  paragraph  1  is  calculated  from  the  day 
next  following  the  day  on  which  the  party  or  his  legal  represen- 
tative has,  by  service,  learned  the  fact  of  the  patent  judgment 
or  the  court  judgment  (as  the  case  may  be)  having  been 
rendered. 

No  re-trial  may  be  demanded  when  three  years  have  elapsed 
from  the  day  on  which  the  patent  judgment  has  been  rendered. 

ABT.  123.  As  regards  a  demand  for  re-trial  and  subse- 
quent proceedings  in  a  trial,  an  appeal  trial  and  an  action,  the 
provisions  relating  to  the  procedure  for  the  particular  instance 
(class  of  trial)  apply  mutatis  mutandis,  unless  there  be  special 
provisions  to  the  contrary  in  this  chapter. 

ABT.  124.  The  provisions  of  Art.  467,  paragraph  2,  Art. 
471,  Art.  472,  paragraphs  1  and  2,  and  Arts.  475-482,  of  the 
Code  of  Civil  Procedure  apply  mutatis  mutandis  to  re-trial 
made  in  a  trial,  an  appeal  trial  or  an  action. 

ABT.  128.  To  a  statement  of  dissatisfaction  with  a  patent 
judgment  or  court  judgment  by  a  third  person  on  the  ground 
that  such  judgment  has  been  caused  to  be  rendered  by  the  collu- 
sion of  the  claimant  and  defendant  with  intent  to  fraudulently 
prejudice  the  rights  or  interests  of  such  third  person,  the  pro- 
visions relating  to  re-trial  on  the  demand  for  revivor  apply 
mutatis  mutandis. 

In  the  case  mentioned  in  the  foregoing  paragraph,  the 
claimant  and  defendant  are  treated  as  joint  defendants. 


JUGOSLAVIA 


CHAPTER  I 

GENERAL  PROVISIONS 

SECTION  1.  Under  the  name  of  "  Bureau  of  Industrial 
Property"  there  is  created  an  official  and  independent  central 
organism,  the  location  of  which  shall  be  at  Belgrade.  The  com- 
petence of  this  Bureau  shall  be  extensive  to  the  whole  of  the 
Kingdom  of  the  Serbs,  Croats  and  Slovenes.  The  Bureau  shall 
be  subject  to  the  Minister  of  Commerce  and  Industry. 

The  Minister  of  Commerce  and  Industry  shall  have  the 
authority  to  transfer  the  location  of  the  Bureau  elsewhere. 

SEC.  2.  The  Bureau  shall  transact  all  matters  that  are 
attributed  thereto  by  the  present  ordinance  and  which  have  rela- 
tion to  the  protection  of  industrial  property. 

SEC.  3.  The  Bureau  shall  be  directed  by  a  President  who 
shall  be  responsible  for  all  matters  of  administration. 

The  President  shall  be  an  official  appointed  through  Royal 
Decree  and  he  shall  possess  the  rank  of  Chief  of  Section. 

SEC.  4.     The  Bureau  of  Industrial  Property  shall  comprise : 

1) 

2)  An  Application  Section  for  designs,  models,  and  trade 
marks ; 

3)  An  Appellate  Section; 

4)  An  Opposition  Section;  and 

5)  A  Cassation  Section  (Sec.  72). 

Until  further  order,  the  officials  of  the  Bureau,  named 
through  Royal  Decree,  shall  be  the  following: 

In  the  Application  Section  for  .  .  .  trade  marks,  a  Chief, 
versed  in  the  law,  with  the  rank  of  Inspector;  two  Referees 
(Examiners),  lawyers  with  the  rank  of  Secretary;  eight  Tech- 
nicians (one  with  the  rank  of  Inspector  and  seven  with  that  of 
Secretary) ;  two  Registrars,  and  two  clerks  for  the  drawing  up 
of  the  graces-verbal. 

The  officials  of  the  two  Application  Sections,  named  through 
Royal  Decree,  shall  also  sit  in  the  Appellate  Section  and  in  the 
Opposition  Section. 

.  :  i 

*Matter  not  relating  to  trade  marks  has  been  omitted. 


JUGOSLAVIA  511 

The  Bureau  shall,  in  addition,  have  one  File  Clerk,  one 
Librarian  with  the  rank  of  Secretary,  four  Clerks  (two  jurists, 
two  technicians),  as  well  as  the  necessary  number  of  clerks  and 
assistants. 

The  number  of  officials  named  through  Royal  Decree  may 
be  increased  in  case  of  need.  The  officials  and  the  provisional 
personnel  shall  be  considered,  as  regards  rank  and  salary,  simi- 
lar to  the  personnel  of  the  same  category  in  the  Ministry  of 
Commerce  and  Industry. 

It  is  the  President  of  the  Bureau  that  will  appoint  and 
dismiss  the  provisional  personnel. 

The  officials  shall  be  subject  to  the  disciplinary  authority  of 
the  President  of  the  Bureau  and  the  Minister  of  Commerce  and 
Industry;  as  to  the  personnel  that  is  not  named  by  Royal  De- 
cree, it  is  the  President  of  the  Bureau  that  shall  exercise  dis- 
ciplinary authority. 

SEC.  5.  The  Bureau  shall  keep  its  own  accounts,  in  which 
it  shall  enter  the  fees  paid  in,  and  carry  on  the  statistical  labors 
of  the  Bureau. 

SEC.  6.  The  Bureau  shall  maintain  its  own  budget.  The 
President  shall  sign  the  orders  for  payment  in  second  instance. 

All  Financial  Administrations  of  the  State  and  the 
Treasury  Offices  of  the  State  shall  be  bound  to  accept  from 
those  interested  sums  of  money  for  the  printing  and  other  ex- 
penses resulting  from  orders  given  by  the  Bureau  to  the  said 
persons.  The  Financial  Administrations  and  the  Treasury 
Offices  are  bound  to  open  an  account  in  the  name  of  the  Bureau 
and  to  notify,  the  same  day,  the  Bureau  and  the  main  Treasury 
of  the  State  at  Belgrade  regarding  payments  effected. 

It  is  the  President  of  the  Bureau  that  shall  dispose — 
through  the  intermediary  of  the  Treasury  of  the  State — of  the 
sums  collected. 

SEC.  7.  The  protection  of  industrial  property  shall  com- 
prise that  of  ...  trade  marks. 

CHAPTER  II 

THE  SUBJECT  MATTER  OP  THE  RIGHT  TO  INDUSTRIAL  PROPERTY 
.  •  •  .  •  •  .  •  .  . 

MARKS  OP  MANUFACTURE  AND  OF  COMMERCE 

Definition 

SEC.  49.  There  shall  be  considered  as  marks  of  manufac- 
ture and  of  commerce  the  particular  signs  that,  under  different 
forms,  serve  to  distinguish,  in  trade,  industrial  or  agricultural 
products  from  other  products  of  the  same  nature. 


512  JUGOSLAVIA 

These  signs  may  be  employed  under  the  form  of  marks, 
seals,  vignettes,  reliefs,  ciphers,  inscriptions,  special  illustra- 
tions, etc. 

To  the  end  of  ascertaining  whether  a  sign  is  susceptible  of 
constituting  a  mark,  account  shall  be  taken  of  all  the  circum- 
stances of  fact  and,  in  particular,  of  the  duration  of  use  that 
has  already  been  made  of  this  sign. 

Insignia  Excluded  as  Marks 

SEC.  50.  There  shall  be  excluded  from  protection  marks 
that  serve  for  designating  articles  of  monopoly,  save  the  case 
in  which  it  is  the  Administration  of  the  monopoly  of  the  State 
that  asks,  itself,  for  the  protection  of  the  mark. 

SEC.  51.  There  shall  be  excluded  from  registration  and, 
in  consequence,  from  protection,  marks  and  words : 

1)  That  represent  the  person  of  the  King  or  of  other  mem- 
ber of  the  Royal  House; 

2)  That  represent  the  arms  of  States  or  other  public  arms; 

3)  That  relate,  in  an  exclusive  manner,  to  the  place,  the 
time,  or  to  the  mode  of  manufacture  of  the  merchandise,  to  the 
kind,  the  quality,  or  to  the  purpose  of  this  latter,  or  to  its  price, 
its  quantity,  or  its  weight; 

4)  That  are  of  general  use  in  commerce  for  designating 
certain  classes  of  goods;  and 

5)  That  have  an  immoral  character  or  one  contrary  to  pub- 
lic order,  or  contain  inscriptions  or  indications  not  correspond- 
ing with  the  truth,  and  of  a  nature  to  deceive  the  consuming 
public. 

SEC.  52.  Marks  that  contain  the  arms  of  the  King  or  of 
a  member  of  the  Eoyal  House,  or  those  of  the  State,  or  any 
other  public  arms,  or  a  distinction  of  honor,  may  not  be  regis- 
tered unless  the  applicant  presents  the  instrument  that  author- 
izes him  to  make  use  of  these  insignia  in  conformity  with  the 
laws  and  provisions  in  force. 

Protection  of  Word  Marks 

SEC.  53.  The  exclusive  right  to  make  use  of  a  mark  that 
consists  of  one  or  more  words  shall  extend  not  only  to  the  use 
of  the  mark  in  the  form  under  which  it  has  been  deposited,  but 
even  to  that  which  may  be  made  thereof  in  other  forms  repro- 
ducing the  mark  protected,  in  whole  or  in  part,  in  different 
colors,  dimensions,  or  characters. 

SEC.  54.  The  registration  of  a  mark  that  consists  exclu- 
sively of  letters  or  of  words  shall  not  prevent  another  person 
from  offering  for  sale  or  distributing  in  trade  merchandise  bear- 
ing these  signs,  if  these  letters  and  words  represent  the  name, 


JUGOSLAVIA  513 

the  firm,  or  the  designation  of  the  enterprise  of  this  other 
person. 

This  other  person,  whose  name,  firm,  or  designation  of  es- 
tablishment, is  identical  with  the  mark  previously  protected  in 
favor  of  a  third  person,  may  contest  and  have  taken  away  from 
the  holder  of  record  of  this  mark  the  right  to  make  use  thereof 
for  the  same  kinds  of  goods,  save  when  the  holder  of  record  of 
the  mark  bears  the  same  name,  has  the  same  firm,  or  when  his 
enterprise  bears  the  same  designation. 

Obligatory  Use  of  the  Mark 

SEC.  55.  The  use  of  registered  marks  is  not  obligatory; 
however,  the  Minister  of  Commerce  and  Industry  may  order 
that  certain  goods  be  provided  with  a  registered  mark  before 
being  distributed  in  trade. 

Limitation  of  Use  of  Marks  to  Certain  Classes  of  Goods 

SEC.  56.  The  right  to  a  mark  shall  not  prevent  another 
merchant  from  making  use  of  the  same  mark  for  designating 
other  classes  of  goods. 

In  case  of  doubt  as  to  the  similarity  of  goods,  it  is  the 
Bureau  of  Industrial  Property  that  shall  decide,  after  having 
heard,  in  case  of  necessity,  the  opinion  of  the  Chamber  of  Com- 
merce and  Industry. 

SEC.  57.  The  same  person  may  have  several  marks  regis- 
tered for  the  same  kind  of  goods. 

SEC.  58.  The  effects  of  the  mark  intended  for  the  designa- 
tion of  the  product  shall  likewise  extend  to  the  envelopes,  wrap- 
pers, containers,  cases,  and  other  modes  of  holding,  of  the  mer- 
chandise. 

SEC.  59.    The  present  law  implies  no  change  in  the  pro- 
visions at  present  in  force  in  whatever  concerns  the  special 
marks  prescribed  for  certain  products,  and,  in  particular,  those 
relative  to  the  stamping  of  precious  metals. 
Duration  of  Protection 

SEC.  60.  The  right  to  the  mark  shall  not  be  limited  to  a 
certain  term.  It  shall  endure  as  long  as  the  prescribed  taxes 
are  paid  regularly  and  in  due  time. 

The  right  to  a  mark  shall  become  effective  counting  from 
its  inscription  in  the  Eegister. 

Transfer  of  Trade  Mark  Rights 

SEC.  61.  The  right  to  a  mark  is  connected  with  the  enter- 
prise. 

It  shall  be  extinguished  together  with  the  enterprise,  and 
may  be  transferred  only  with  the  enterprise. 

In  this  latter  case,  the  new  owner  shall  be  bound  to  have 


514  JUGOSLAVIA 

the  registration  of  the  mark  transcribed  in  his  name,  unless  he 
continues  the  exploitation  of  the  enterprise  without  change  and 
under  the  same  business  designation. 

For  so  long  as  the  transcription  of  the  registration  shall 
not  have  taken  place,  the  new  owner  may  not  avail  himself  of 
his  right  to  the  mark,  and  all  official  communications  with  refer- 
ence to  the  mark  shall  be  addressed  to  the  holder  of  record  or 
to  the  attorney  that  he  has  appointed. 

Extinction  of  Protection 

SEC.  62.     The  protection  of  the  mark  shall  expire : 

1)  When  the  holder  of  record  shall  renounce  his  right  to 
the  mark.    If  the  renunciation  concerns  only  a  determined  class 
of  goods,  the  mark  shall  remain  valid  for  the  other  classes ; 

2)  When  the  annual  tax  or  the  additional  tax  has  not  been 
paid  in  due  time; 

3)  In  case  of  suit,  when  the  decision  of  the  Bureau  of  In- 
dustrial Property — proclaiming  the  extinction  of  the  mark — has 
become  definitive. 

The  protection  of  a  mark  shall  be  extinguished :  In  the  case 
of  No.  1,  the  day  following  the  day  on  which  the  declaration  of 
renunciation  has  been  received;  in  the  case  of  No.  2,  the  day 
that  follows  the  expiration  of  the  last  year  for  which  the  tax 
has  been  paid ;  in  the  case  of  No.  3,  the  day  on  which  the  decision 
of  the  Bureau  of  Industrial  Property  has  become  definitive. 

SEC.  63.  The  holder  of  record  of  a  mark  that  is  extin- 
guished, in  conformity  with  Sec.  62,  may  reapply  for  the  pro- 
tection thereof  for  the  same  class  or  for  another  class  of  goods. 
Third  parties  may  not  deposit  the  same  mark,  or  a  similar  mark, 
for  the  same  class  of  goods,  until  after  the  expiration  of  the 
two  years  that  follow  the  extinction  of  the  mark,  if,  during  this 
term,  the  old  holder  of  record  has  not  obtained  protection  anew. 

There  shall  be  considered  as  similar  any  signs  that — in 
trade — may  easily  be  confused  with  the  mark  protected. 

Avoidance 

SEC.  64.    The  right  to  a  mark  shall  be  avoided: 

1)  When  the  sign  that  constitutes  it  cannot  be  considered 
as  a  mark  in  the  sense  of  Sec.  49 ; 

2)  When  the  mark  is  excluded  from  protection  in  accord- 
ance with  the  tenor  of  Sees.  50,  51,  52,  and  54 ; 

3)  When  the  mark  so  resembles  another  mark  previously 
registered  for  the  same  class  of  goods  and  legally  valid,  that 
the  ordinary  purchaser  cannot  detect  the  difference  save  by  pay- 
ing attention  particularly  thereto ; 

4)  When  the  mark  contains,  without  the  party  interested 


JUGOSLAVIA  515 

having  given  his  consent,  the  name  or  portrait  of  a  third  party. 

In  the  case  of  Nos.  1,  2,  and  4,  the  avoidance  of  the  mark 
may  be  petitioned  by  any  interested  person ;  in  the  case  of  No. 
3,  only  by  the  holder  of  record  of  the  mark  previously  registered. 

The  holder  of  an  already  extinguished  mark,  or  he  that 
has  legally  acquired  the  protection,  may  petition  the  avoidance 
of  another  mark,  identical  with  or  similar  to  the  extinct  mark, 
with  reference  to  which  the  delay  of  two  years,  provided  for  in 
Sec.  63,  is  not  yet  expired. 

The  avoidance  of  the  right  to  a  mark  shall  have  a  retro- 
active effect,  in  this  sense:  that  the  right  shall  be  considered 
as  having  never  existed. 

Dispossession 

SEC.  65.  The  holder  of  record  of  a  mark  shall  be  dispos- 
sessed when  a  third  party  proves  that  he  has  employed  the 
same  mark  for  the  same  goods,  but  without  having  it  regis- 
tered, and  that,  in  the  trade  circles  interested,  this  mark  was 
already  considered  as  the  distinctive  sign  of  the  products  of  the 
establishment  of  this  third  party  at  the  moment  at  which  the 
opposed  mark  was  registered. 

The  petition  for  dispossession  shall  be  rejected  if  the  de- 
fender proves  that  he  has  had  the  mark  registered  with  the 
consent  of  the  petitioner,  or  that  the  enterprise  in  favor  of 
which  the  mark  was  registered  has  employed  this  mark — prior 
to  registration — for  as  long  a  time  as,  or  even  longer  than,  the 
petitioner. 

The  petition  for  dispossession  of  such  a  mark  must  be 
lodged,  at  latest,  within  two  years  counting  from  the  regis- 
tration. 

The  dispossession  shall  have  a  retroactive  effect  and  the 
right  of  the  holder  of  record  of  the  mark  shall  be  considered  as 
having  never  existed. 

When  the  decision  that  pronounces  the  dispossession  of  the 
registered  holder  of  the  mark  has  become  definitive,  the  peti- 
tioner is  authorized  to  make  application  for  the  registration 
of  the  mark  in  his  own  name. 

CHAPTER  III 
ORGANIZATION  OF  THE  BUREAU  OF  INDUSTRIAL  PROPERTY 

Competence  of  Bureau 

SEC.  66.  The  Bureau  of  Industrial  Property  shall  have 
competence  for  ...  all  inscriptions  ...  in  the  Trade  Mark 
Register,  and  for  deciding  as  to  the  revocation  of  ...  trade 
marks. 


516  JUGOSLAVIA 

The  Bureau  of  Industrial  Property  shall  be  obliged  to  fur- 
nish, on  demand  of  the  Courts,  opinions  in  writing  on  questions 
concerning  .  .  .  trade  marks. 

SEC.  67.  The  Bureau  of  Industrial  Property  shall  consist 
of  permanent  and  temporary  members,  the  number  of  which 
shall  be  fixed,  according  to  needs,  by  the  Minister  of  Commerce 
and  Industry. 

The  President  of  the  Bureau  of  Industrial  Property  shall 
be,  by  virtue  of  his  official  position,  a  permanent  member.  The 
permanent  members  shall  be  chosen  from  among  those  persons 
that  figure  in  the  category  of  officials  named  by  Royal  Decree ; 
the  temporary  members  shall  be  chosen  from  among  public  offi- 
cials in  general,  or  from  among  capable  persons  of  other  pro- 
fessions. 

The  President  of  the  Bureau  of  Industrial  Property  and 
the  Chiefs  of  the  Appellate  Section  and  the  Opposition  Section 
must  possess  a  legal  education. 

The  permanent  members  and  the  temporary  members  are 
to  be  named  on  proposal  of  the  Minister  of  Commerce  and  In- 
dustry, subject  to  the  following  conditions : 

Temporary  members,  for  a  term  of  five  years ;  permanent 
members,  for  an  indeterminate  period. 

When  a  permanent  member  shall  cease  to  be  an  official  of 
the  Bureau  of  Industrial  Property,  he  shall  cease  at  the  same 
time  to  be  a  permanent  official. 

Furthermore,  any  official  named  temporary  member,  or  per- 
manent, shall  hold  his  position  and  his  rank  in  the  service  of 
the  State. 

Temporary  members  shall  not  receive  a  fixed  salary ;  special 
remuneration  shall  be  fixed  for  them. 

The  Bureau  of  Industrial  Property  shall  be  autonomous 
and  independent  in  its  decisions,  and  shall  be  bound  only  by 
the  laws  and  the  present  ordinance. 

The  President  of  the  Bureau  of  Industrial  Property,  the 
same  as  all  the  permanent  members  and  temporary  members — 
before  entering  upon  their  duties — shall  take  the  oath  imposed 
upon  judges. 

Sections 

SBC.  68 

The  Application  Section  for  .  .  .  trade  marks  shall  control 
in  an  independent  mode  applications  for  protection  concerning 
.  .  .  trade  marks ;  it  shall  order  the  inscription  thereof  in  the 
Register  and  shall  decide  all  non-contentious  petitions  that  con- 
cern .  .  .  trade  marks  already  registered,  such  as  assignments, 


JUGOSLAVIA  517 

declarations  of  litigation,  facultative  licenses,  expirations  of 
.  .  .  trade  marks. 

At  the  head  of  each  Section  there  shall  be  found  a  Chief 
whom  the  Minister  of  Commerce  and  Industry  shall  designate 
from  among  the  permanent  members,  on  nomination  of  the 
President  of  the  Bureau  of  Industrial  Property. 

To  the  end  of  rendering  their  decisions,  the  Sections  shall 
consist  of  three  members  .  .  .  ;  in  the  Application  Section 
for  .  .  .  trade  marks  .  .  .  they  shall  be  chosen  from  among 
the  permanent  personnel  and,  in  case  of  need,  from  the  tem- 
porary personnel. 

In  the  Application  Section  for  .  .  .  trade  marks,  there 
must  always  be  two  permanent  jurists;  the  third  member  may 
be  a  jurist,  or  a  temporary  or  permanent  technician,  and  he  shall 
be  designated  by  the  Chief  of  Section. 

At  the  beginning  of  each  year  the  President  of  the  Bureau 
of  Industrial  Property  shall  designate  the  permanent  members 
of  the  Application  Section  for  .  .  .  trade  marks;  it  shall  be 
the  Chiefs  of  the  Application  Sections  that  will  proceed  to  the 
composition  of  the  necessary  divisions  in  the  Application  Sec- 
tions. 

Section  of  Appeals  and  Section  of  Opposition 
SEC.  69.     The  decisions  of  the  Application  Divisions  may 

be  carried  by  those  interested  before  the  Appellate  Section. 

The  appeal  must  be  lodged  in  the  Bureau  of  Industrial  Property 

within  the  thirty  days  that  follow  the  notification  of  the  decision. 
The  Appellate  Section  shall  consist  of  five  permanent  or 

temporary  members  of  the  Bureau,  to-wit: 

1)  .          .          .          .          .          .          .          .          . 

2)  When  it  is  a  question  of  deciding  regarding  a   ... 
trade  mark,  three  jurists  and  two  technicians. 

The  decisions  of  this  Section  shall  be  definitive. 

Decisions  .  .  .  relative  to  the  avoidance  ...  of  trade 
marks  and  the  dispossession  of  the  holders  of  record  of  these 
objects  shall  be  rendered  by  the  Opposition  Section;  this  Sec- 
tion shall  consist  of  five  permanent  or  temporary  members  of 
the  Bureau  of  Industrial  Property,  to-wit: 

1)  .          .          .          .          .  '       

2)  When  it  is  a  question  of  ...  trade  marks,  three  jurists 
and  two  technicians. 

This  Section  shall  decide  likewise  in  the  cases  provided  for 
in  Sec.  153. 

The  Appellate  Section  and  the  Opposition  Section  shall  be 


518  JUGOSLAVIA 

presided  over  by  the  President  of  the  Bureau  of  Industrial  Prop- 
erty or  by  a  person  that  he  shall  designate ;  the  other  members 
of  the  two  Sections  shall  be  designated,  in  conformity  with  the 
provisions  of  the  present  ordinance,  by  the  President,  and  he 
shall  choose  them  from  among  the  permanent  or  temporary 
members  of  the  Bureau  that  have  not  participated  in  the  deci- 
sion rendered,  in  the  same  case,  by  the  Application  Section  or 
by  the  Appellate  Section. 

SEC.  70.  For  the  preparation  of  opinions  demanded  by 
the  Courts,  in  virtue  of  Sec.  66,  paragraph  2,  the  President  of 
the  Bureau  of  Industrial  Property  shall  each  time  designate  a 
division  consisting  of  at  least  five  members,  of  whom  two  at 
least  shall  be  jurists. 

Procedure  in  the  Sections 

SEC.  71.  In  all  the  Sections,  the  preliminary  actions  pre- 
paratory to  the  decision  shall  be  rendered  by  the  referee  inde- 
pendently, or  in  connection  with  other  technician  members  whose 
opinion  he  should  know  on  certain  questions. 

The  actions  of  the  referee  may  not  be  made  the  subject 
matter  of  a  special  appeal,  but  the  parties  may  petition  the 
Chief  of  the  Section  to  modify  the  preliminary  actions  of  the 
referee.  If  this  petition  is  without  avail,  the  parties  may  then 
demand  a  hearing,  to  the  end  that  the  matter  be  settled 
pre- judicially. 

In  all  the  Sections  decisions  shall  be  rendered  by  absolute 
majority. 

Before  pronouncing  decision,  each  Section  may  demand  the 
opinion  of  experts  chosen  from  among  the  members  of  the 
Bureau  of  Industrial  Property,  or  elsewhere. 

All  decisions  and  all  actions  of  the  Sections  shall  be  ren- 
dered in  the  name  of  the  Bureau  of  Industrial  Property  and 
with  reasons  given;  a  copy  shall  be  forwarded  to  each  one  of 
the  parties  interested.  In  each  decision  (or  action),  there  shall 
be  indicated  the  Section  that  rendered  same  and  the  members 
that  have  participated  therein. 

Cassation  Section  of  the  Bureau  of  Industrial  Property 

SEC.  72.  Within  thirty  days  following  the  notification,  the 
decision  of  the  Opposition  Section  may  be  made  the  subject  mat- 
ter of  an  appeal  to  the  Cassation  Section  of  the  Bureau  of  In- 
dustrial Property.  The  appeal  must  be  lodged  with  the  Bureau 
of  Industrial  Property. 

This  Section  shall  consist  of  five  members,  to-wit:  three 
members  of  the  Supreme  Tribunals,  the  eldest  of  whom  shall 
preside,  and  two  technician  members. 


JUGOSLAVIA  519 

The  first  three  members  and  their  substitutes  shall  be  named 
by  the  King  for  a  period  of  five  years,  and  on  the  proposal  of 
the  Minister  of  Commerce  and  Industry. 

The  two  other  technician  members  shall  be  designated  by 
the  Chief  of  the  Section  from  among  the  temporary  members  of 
the  Bureau  of  Industrial  Property  (Sec.  67) ;  the  President  shall 
have  care  that  none  of  these  members  shall  have  taken  part  in 
the  same  case,  as  to  decision  or  as  to  opposition,  before  the 
Bureau  of  Industrial  Property. 

The  members  of  this  Section  shall  receive  special  remunera- 
tion, to-wit :  the  first  three,  fixed  salaries ;  the  technician  mem- 
bers, on  the  contrary,  an  attendance  fee  for  each  hearing. 
Grounds  for  Exemption 

SEC.  73.  For  the  exemption  of  members  of  the  Cassation 
Section  and  members  of  the  Application  Section,  the  Appellate 
Section,  and  the  Opposition  Section,  of  the  Bureau  of  Industrial 
Property,  there  shall  be  applicable  the  provisions  of  Sees.  52, 
53,  54,  55,  and  56,  of  the  Code  of  Civil  Procedure  of  the  King- 
dom of  Serbia. 

Vacations 

SBC.  74.  The  services  of  the  Bureau  of  Industrial  Prop- 
erty shall  be  suspended  on  Sundays  and  other  holidays,  during 
which  the  service  of  the  tribunals  located  at  the  Bureau  shall 
be  suspended.  The  principal  vacations  of  the  Bureau  shall 
coincide,  as  regards  time,  with  the  judicial  vacations. 

When  the  last  day  of  a  term  falls  on  a  Sunday  or  on  any 
other  holiday,  the  first  work  day  that  follows  the  Sunday  or 
holiday  shall  be  considered  as  the  final  day  of  the  term.  The 
principal  vacations  of  the  Bureau  of  Industrial  Property  shall 
not  cause  interruption  as  regards  terms.  When  the  last  day 
of  a  term  falls  on  a  day  of  the  long  vacation,  the  first  work  day 
that  follows  the  long  vacation  shall  be  considered  as  the  last 
day  of  the  term. 

During  the  long  vacation,  the  activity  of  the  Bureau  of  In- 
dustrial Property  shall  consist  solely  in  receiving  and  entering 
applications,  effecting  registrations  in  the  Registers,  and  in  de- 
ciding on  applications  as  far  as  is  possible. 

Attorneys 

SEC.  75.  All  persons  not  domiciled  in  the  country  that 
claim  a  right  of  industrial  property,  or  are  owners  of  record 
of  a  right  of  this  nature,  or  are  interested  in  litigation  resulting 
from  one  of  these  rights,  must  appoint  an  attorney  domiciled 
in  the  country. 

The  contents  of  the  power  of  attorney  that  must  be  pre- 


520  JUGOSLAVIA 

sented  at  the  Bureau  of  Industrial  Property  shall  be  prescribed 
by  the  Minister  of  Commerce  and  Industry. 

Notifications  that  shall  be  made  to  the  attorney  shall  be 
of  the  same  legal  effect  as  if  they  were  made  to  the  principal 
himself. 

SEC.  76.  Only  attorneys-at-law,  patent  agents,  and  consult- 
ing engineers,  subjects  of  the  Kingdom,  may  exercise  the  pro- 
fession of  attorneys  in  matters  of  industrial  property. 

The  interests  of  the  State  shall  be  represented  by  State's 
attorneys. 

In  addition  to  their  attorneys,  and,  if  the  Section  that  is 
concerned  with  the  case  so  permits,  the  parties  may  be  repre- 
sented by  other  persons  of  experience  who  will  explain  the 
rights  of  the  parties;  but  the  expenses  that  will  result  there- 
from will  be  upon  them  and  the  petitioning  party  shall  not  have 
the  right  to  claim  therefor  indemnification  from  the  opposing 
party. 

Patent  agents  and  consulting  engineers  will  be  admitted 
by  the  Bureau  of  Industrial  Property  which  will  deliver  diplo- 
mas to  them. 

None  of  these  may  enter  upon  the  performance  of  his  func- 
tions until  after  having  been  registered  in  a  special  Register 
kept  by  the  Bureau  of  Industrial  Property.  These  registra- 
tions shall  be  published  in  the  official  sheet  of  the  Bureau  of 
Industrial  Property. 

The  registration  in  this  Register  and  the  delivery  of  the 
diploma  shall  be  subject  to  a  fee  of  250  dinars. 

In  cases  concerning  the  revocation  or  the  avoidance  of  ... 
trade  marks,  or  the  dispossession  of  the  holders  of  record  of 
rights  on  these  objects,  the  functions  of  attorneys  may  be  exer- 
cised by  attorneys-at-law  only;  patent  agents  and  consulting 
engineers  may  be  attorneys  in  these  cases  only  in  whatever  con- 
cerns technical  questions. 

There  may  be  admitted  as  patent  agents  nationals  that 
possess  the  free  disposal  of  their  property,  that  have  their 
domicile  in  the  country  and  have  not  been  convicted,  or  that 
are  not  under  inquiry,  for  a  crime,  a  dishonorable  offense,  or  a 
contravention  committed  for  the  end  of  gain. 

In  addition,  these  persons  must  possess  the  necessary  tech- 
nical capacity.  They  shall  be  considered  as  possessing  this 
capacity  if,  in  the  country  or  abroad,  they  have  followed  the 
course  of  a  technological  faculty,  or  of  a  technological  univer- 
sity, or  of  an  advanced  school  of  agriculture  having  the  rank  of  a 
university,  or  of  an  academy  of  mines  or  of  forests,  or  of  the 
division  of  natural  history  or  of  mathematics  of  a  faculty  of 


JUGOSLAVIA  521 

philosophy,  and  have  passed  all  the  prescribed  examinations. 

It  is  the  Minister  of  Commerce  and  Industry  that  decides, 
on  the  proposal  of  the  Bureau  of  Industrial  Property,  and,  after 
having  heard  the  competent  Minister,  whether  the  higher  school 
of  the  foreign  country  has  the  rank  of  university  and  whether 
it  gives  sufficient  technical  instruction  for  the  exercise  of  the 
profession. 

To  the  end  that  a  person  that  possesses  the  necessary  quali- 
fication may  be  admitted  as  patent  agent,  it  is  necessary  that 
he  pass  an  apprenticeship  of  two  years  with  a  patent  agent  of 
the  country,  or  with  a  lawyer  that  is  occupied  with  representa- 
tion before  the  Bureau  of  Industrial  Property,  and  shall  un- 
dergo the  examination  of  patent  agent.  The  examination  shall 
take  place  at  the  Bureau  of  Industrial  Property.  The  term 
spent  at  the  Bureau  by  permanent  members  shall  be  counted  as 
apprenticeship  with  a  patent  agent  for  members  that  possess 
the  necessary  qualification. 

Patent  agents  shall  be  placed  under  the  surveillance  of  the 
Bureau  of  Industrial  Property. 

It  is  the  President  of  the  Bureau  of  Industrial  Property 
that  shall  decide  regarding  the  registration  in  the  Register  of 
patent  agents  or  consulting  engineers.  The  refusal  to  order  the 
registration  in  the  Register  may  be  carried  to  the  Minister  of 
Commerce  and  Industry,  by  way  of  appeal,  within  the  thirty 
days  that  follow  the  notification  of  refusal ;  the  decision  of  the 
Minister  will  be  definitive. 

Private  engineers  and  architects  that  are  authorized  to 
publicly  exercise  their  profession  may  become  consulting  en- 
gineers. Before  their  registration  in  the  Register,  patent 
agents  and  consulting  engineers  must  be  sworn. 

SEC.  77.  In  whatever  concerns  disciplinary  penalties  as 
regards  patent  agents  and  candidates  for  this  profession,  there 
shall  be  applied  the  provisions  of  Sees.  53  to  63  of  the  Law  of 
June  15,  1865,  relative  to  Judicial  Attorneys  in  the  Kingdom 
of  Serbia,  with  the  modification  that,  in  order  to  inflict  the 
penalty,  the  President  of  the  Bureau  of  Industrial  Property, 
the  Cassation  Section  of  the  said  Bureau,  and  the  Minister  of 
Commerce  and  Industry,  shall  replace  the  President  of  the 
Tribunal  of  First  Instance,  the  Minister  of  Justice,  and  the 
Disciplinary  Tribunal. 

For  infractions  of  slight  importance,  the  President  of  the 
Bureau  of  Industrial  Property  may  inflict  upon  a  patent  agent 
a  censure  or  a  fine  for  as  much  as  150  dinars.  Within  the  term 
of  fifteen  days,  the  patent  agent  may  have  recourse  against  this 
penalty  before  the  Cassation  Section  of  the  Bureau  of  Indus- 


522  JUGOSLAVIA 

trial  Property ;  the  decision  of  this  Section  will  be  definitive. 

If  it  is  a  matter  of  graver  infractions,  the  President  of  the 
Bureau  of  Industrial  Property  shall  transmit  the  records  to 
the  Cassation  Section,  which  shall  inflict  upon  the  patent  agent 
a  censure  or  a  fine  for  as  much  as  1100  dinars,  or  shall  prohibit 
him  from  the  exercise  of  his  profession  for  the  term  of  from 
one  month  to  one  year,  or  decide  that  he  no  longer  merits  the 
confidence  of  the  public  and  must  be  removed  from  the  Register 
of  Patent  Agents.  Within  fifteen  days,  the  patent  agent  may 
have  recourse  against  this  decision  to  the  Minister  of  Com- 
merce and  Industry;  the  decision  of  this  latter  will  be  definitive. 

In  addition,  by  decision  of  the  President  of  the  Bureau  of 
Industrial  Property,  the  patent  agent  may  be  relieved  of  his 
functions,  in  the  cases  and  within  the  limits  foreseen  in  Sec.  63 
of  the  Law  concerning  Judicial  Attorneys  in  the  Kingdom  of 
Serbia. 

All  complaints  lodged  by  virtue  of  the  present  section  shall 
be  addressed  to  the  Bureau  of  Industrial  Property. 
Nomination  of  an  Attorney 

SEC.  78.  When  the  holder  of  ...  a  trade  mark  is  domi- 
ciled abroad,  or  when  he  has  no  representative  in  the  country, 
or  when  his  domicile  in  the  country  is  unknown,  the  Bureau  of 
Industrial  Property  may  designate  for  him  a  curator.  The 
designation  of  this  curator  must  be  published  in  the  Official 
Journal  of  the  Bureau  of  Industrial  Property.  This  curator 
shall  retain  his  functions  until  the  moment  that  the  holder  of 
record  himself  shall  have  designated  an  attorney. 

Official  Journal  of  the  Bureau  of  Industrial  Property 

SEC.  79.  Under  the  title  of  Glasnik  Uprave  za  Zastitu  In- 
dustrijske  Svojine  (Bulletin  of  the  Bureau  of  Industrial  Prop- 
erty), the  Bureau  shall  publish  an  official  periodical  which  shall 
appear  regularly,  and  in  which  shall  be  published  the  notices 
and  communications  foreseen  by  the  present  ordinance  in  what- 
ever concerns  .  .  .  trade  marks. 

•  ••••••••• 

Trade  Mark  Register 

SEC.  82.  There  shall  be  kept  at  the  Bureau  of  Industrial 
Property  a  Trade  Mark  Register  which  must  contain  the  fol- 
lowing indications :  the  serial  number ;  the  date  of  registration ; 
the  original  mark ;  the  date  of  deposit ;  the  priority ;  the  names 
and  surnames ;  the  firm  and  domicile  of  the  owner  of  the  mark, 
and,  eventually,  of  his  attorney;  the  designation  of  the  enter- 
prise that  employs  the  mark;  the  goods  and  classes  of  goods  to 
which  the  mark  is  applied;  details  regarding  the  payment  of 


JUGOSLAVIA  523 

annuities;  the  transfer  and  the  extinction  of  the  right  to  the 
mark;  the  Register  shall  contain  one  column  for  "observations," 
in  which  shall  be  entered  any  other  indications  having  impor- 
tance as  regards  the  mark. 

SEC.  83.  The  Bureau  of  Industrial  Property  shall  keep  in 
special  archives  the  descriptions,  designs,  models  and  samples 
in  the  matter  of  ...  existing  trade  marks,  as  well  as  the  ap- 
plications and  documents  serving  as  a  basis  for  the  registra- 
tions made  in  the  Register. 

.  .  .  Any  person  may  consult  the  Register,  designs,  descrip- 
tions, etc.,  and  make  copies  thereof. 

After  registration  in  the  Register,  the  Bureau  shall  publish 
in  the  Official  Journal  the  designs  and  models  and  marks,  as 
well  as  the  modifications  that  relate  to  these  objects. 

The  Bureau  of  Industrial  Property  shall  deliver,  on  applica- 
tion, certified  extracts  of  registrations  in  the  Register. 

Legal  Aids 

SEC.  84.  The  Tribunals  and  all  other  authorities  shall  be 
bound  to  lend  their  assistance  to  the  Bureau  of  Industrial 
Property. 

CHAPTER  IV 
DELIVERY  OF  CERTIFICATE 

•  ••••••••• 

Procedure  for  Registration  of  Trade  Marks 
SEC.  110.    Whoever  shall  wish  to  assure  to  himself  the  ex- 
clusive right  to  the  use  of  a  mark  must  deposit  it,  in  writing 
and  under  the  formalities  prescribed,  directly  or  by  mail,  with 
the  Bureau  of  Industrial  Property. 

Contents  of  the  Application 
SEC.  111.    The  application  must  contain : 

1)  Name  and  surname  (firm),  calling  and  domicile  of  the 
applicant,  and,  eventually,  of  his  attorney; 

2)  Designation  of  the  enterprise  and  of  the  class  of  goods 
for  which  the  protection  of  the  mark  is  petitioned; 

3)  Indication  of  the  duration  for  which  protection  is  peti- 
tioned ; 

4)  Declaration  of  the  applicant  that  he  will  pay  all  the  ex- 
penses of  printing  for  the  publication  of  the  application. 

Annexes  to  the  Demand 
SEC.  112.     There  must  be  annexed  to  the  application: 

1)  The  power  of  attorney,  when  protection  is  applied  for 
through  an  attorney; 

2)  The  mark,  in  the  form  in  which  it  is  to  be  employed,  in 


524  JUGOSLAVIA 

four  identical  copies; 

3)  A  cliche  (electrotype)  of  the  mark,  with  two  impressions 
of  this  cliche; 

4)  If  the  mark  is  intended  for  products  of  metal,  stone, 
glass,  etc.,  there  shall  be  annexed  to  the  application  two  speci- 
mens with  the  mark  stamped  or  engraved. 

Upon  the  application  there  shall  be  affixed  stamps  the 
amount  of  which  shall  represent  the  deposit  fee  and  the  tax 
for  the  first  year  (Sec.  156). 

Right  of  Priority 

SEC.  113.  When  the  application  is  accepted  and  protec- 
tion is  granted,  the  right  of  priority  of  the  mark  protected  is 
acquired  counting  from  the  deposit,  if  this  was  absolutely  regu- 
lar at  the  time  that  it  was  effected. 

If  the  application  is  defective  and  the  defects  are  corrected 
in  good  time,  without  modifying  the  essentials  of  the  mark,  the 
priority  shall  count  from  the  moment  at  which  the  first  deposit 
was  made.  However,  if  the  correction  of  faults  entails  a  modi- 
fication of  the  essentials  of  the  mark,  the  priority  shall  be 
counted  from  the  time  at  which  these  corrections  shall  have  been 
introduced  therein. 

Examination  of  Application 

SEC.  114.  If  the  deposit  is  in  compliance  with  the  require- 
ments of  Sees.  49,  50,  51,  52,  110,  111,  and  112,  and  if  the  ex- 
penses for  printing  of  the  publication  have  been  paid,  the  Ap- 
plication Section  shall  accept  the  mark,  register  it  in  the  Eegis- 
ter,  and  publish  it  at  the  expense  of  the  applicant  in  the  Official 
Journal  by  utilizing  the  cliche  (Sec.  112,  No.  3). 

In  addition,  the  Bureau  of  Industrial  Property  shall  de- 
liver to  the  applicant  a  certificate  attesting  that  the  mark  is 
protected  and  indicating  the  date  of  the  registration  and  the 
essential  contents  of  same;  there  shall  be  attached  thereto  a 
print  of  the  mark  and  eventually  a  specimen  (Sec.  112,  No.  4). 

SEC.  115.    If  the  Bureau  of  Industrial  Property  finds  that 
the  protection  of  the  mark  cannot  be  granted,  it  shall  proceed 
on  all  points  in  conformity  with  the  prescriptions  of  Sec.  109. 
Identical  or  Similar  Marks 

SEC.  116.  If  the  Bureau  of  Industrial  Property  shall  con- 
sider that  the  mark  deposited  is  identical  with  or  similar  to 
another  mark  already  deposited  for  the  same  class  of  goods, 
the  Application  Section  shall  notify  the  depositor  to  this  effect 
and  shall  permit  him  to  withdraw  or  modify  his  application 
(prior  notice) ;  at  the  same  time  it  shall  notify  the  proprietor 
of  the  mark  already  deposited. 


JUGOSLAVIA  525 

CHAPTER  V 
PROCEDURE  IN  ...  TRADE  MARK  MATTERS 

I.    PATENT  OPPOSITIONS* 

SEC.  117.  Procedure  for  revocation,  avoidance,  disposses- 
sion, declaration  of  relative  inefficacy,  or  dependence  of  patents, 
the  grant  of  obligatory  licenses,  and  the  expiry  of  a  patent  .  .  . 
shall  be  initiated  only  on  petition. 

However,  if,  during  any  phase  whatever  of  the  procedure, 
the  petitioner  shall  withdraw,  the  Bureau  of  Industrial  Property 
may  of  its  own  accord  continue  the  procedure  already  com- 
menced, if  it  shall  deem  that  there  are  valid  reasons  therefor, 
and  shall  carry  the  litigation  to  a  conclusion.  If  the  petitioner 
is  not  domiciled  in  the  country,  he  must,  on  demand  of  the  ad- 
verse party,  furnish  surety  for  the  costs  of  the  action;  the  Op- 
position Section  shall  fix  the  character  and  the  amount  of  this 
security.  The  Bureau  shall  require  that  this  surety  be  fur- 
nished, if  the  defendant  so  requires,  within  the  fourteen  days 
that  follow  the  notification  of  the  request;  subsequently  no  re- 
quest in  this  sense  can  be  taken  into  consideration. 

The  Opposition  Section  shall  fix  for  the  applicant  a  delay 
for  furnishing  surety  for  the  expenses;  if  the  applicant  does 
not  comply  within  the  specified  term,  he  shall  be  considered  as 
having  withdrawn  his  application. 

If,  during  the  course  of  the  litigation,  it  is  found  that  the 
surety  furnished  is  insufficient,  it  shall  be  made  sufficient,  on 
petition  of  the  defendant,  following  the  same  procedure. 

SEC.  118.  The  Opposition  Section  may,  without  special 
procedure,  declare  inacceptable  actions  in  opposition  of  patents 
that  have  no  legal  basis,  or  memorials  that  contain  no  precise 
demand,  or  that  contain  a  demand  or  an  objection  that  the  peti- 
tioner is  not  authorized  to  formulate. 

SEC.  119.  The  petition  must  contain  an  explanation  of  the 
litigation,  as  well  as  the  conclusions  formulated;  it  must,  in 
addition,  designate  the  reasons  upon  which  it  is  based. 

The  accompanying  papers  shall  be  deposited  in  original  or 
in  legalized  copies.  The  petition  and  the  annexes  shall  be  de- 
posited at  the  Bureau  in  as  many  copies  as  there  are  parties 
interested  in  the  case.  A  single  petition  may  be  directed  against 
only  a  single  patent,  together  with  the  patents  of  addition  that 
relate  thereto. 

Preliminary  Procedure 

SEC.  120.  When  the  petition  is  regular,  the  referee  charged 
with  the  matter  shall  forward  a  copy  thereof  along  with  its 

*See  Sec.  141. 


526  JUGOSLAVIA 

annexes  to  the  defendant  party  and  shall  fix  for  him  a  delay 
of  thirty  days  for  responding.  For  weighty  reasons,  this  delay 
may  be  extended  by  the  Opposition  Section. 

The  response  must  be  presented  in  a  number  of  copies  suf- 
ficient for  each  of  the  parties  interested  in  the  case  to  receive 
one. 

SBC.  121.  After  the  filing  of  the  response,  or  after  the  ex- 
piration of  the  delay  fixed  for  this  purpose,  the  procedure  shall 
be  carried  on  in  conformity  with  Sec.  95.* 

Public  Hearing 

SEC.  122.  "When  the  preliminary  procedure  is  terminated, 
the  Chief  of  the  Opposition  Section  shall  fix  the  day  on  which 
the  public  hearing  shall  take  place.  This  fixation  shall  not  be 
made  when  the  Opposition  Section  shall  have  decided,  in  a  non- 
public  hearing,  that  the  petition  must  be  declared  not  receivable 
by  reason  of  the  lack  of  authority  of  the  Bureau  of  Industrial 
Property,  or  because  there  is  already  res  adjudicata. 

Summons 

SEC.  123.  There  shall  be  summoned  for  the  public  hearing 
the  parties  interested,  their  attorneys,  witnesses  and  experts 
that  are  to  be  heard  with  respect  to  the  proposal  of  the  referee. 
If  the  parties  or  their  attorneys  shall  not  have  appeared  at  the 
public  hearing,  this  latter  shall  be  adjourned  on  written  de- 
mand of  one  of  the  parties ;  however,  if  the  petition  in  this  sense 
is  not  formulated,  the  proceedings  shall  be  returned  to  the  files 
and  the  application  shall  be  considered  as  never  having  been 
presented. 

Debates 

SEC.  124.  At  the  public  hearing,  the  debates  shall  be  oral 
and  public,  and  they  shall  be  regulated  in  accordance  with  the 
prescriptions  of  Sees.  149  to  177  of  the  Code  of  Civil  Procedure 
of  the  Kingdom  of  Serbia. 

Outside  the  cases  foreseen  in  Sec.  150  of  the  said  Code,  the 
Section  appealed  to,  for  rendering  decision,  may,  on  petition 

*  "Sec.  95.  As  soon  as  the  response  has  been  filed  or  as  soon  as  the  delay 
stipulated  to  this  effect  is  expired,  and  after  all  questions  have  been  clearly  eluci- 
dated, the  matter  shall  be  referred  to  the  Application  Section  so  that  it  may 
make  decision. 

"If,  for  the  clarifying  of  a  point,  it  is  necessary  to  still  raise  objections,  the 
referee  charged  with  the  case  shall  demand  in  writing  explanations  from  the 
parties,  which  same  he  shall  forward  to  the  adverse  party  so  that  he  may  respond 
thereto  within  the  term  fixed,  until  all  questions  at  issue  shall  be  sufficiently  clarified 
on  either  part.  In  case  of  need,  the  referee  may  summon  the  parties  in  order  to 
hear  or  have  them  present  proofs ;  he  may  hear  witnesses,  experts,  and  persons 
experienced  in  the  line  of  business,  and  take  all  necessary  measures  to  the  end  that 
the  case  may  be,  as  nearly  as  possible,  decided  and  plainly  set  forth  at  the  time  of 
being  referred  to  the  Application  Section." 


JUGOSLAVIA  527 

of  a  party  or  a  witness,  order  that  the  debates  shall  take  place 
behind  closed  doors,  for  all  or  part,  if  the  public  debates  might 
risk  endangering  a  major  interest  of  the  State  or  expose  a  secret 
of  manufacture  of  one  of  the  parties  or  of  a  witness. 

Notwithstanding  this  debate  behind  closed  doors,  the  mem- 
bers of  the  Bureau  and  of  the  Cassation  Section  of  the  Bureau 
of  Industrial  Property  may  be  present. 

Proofs 

SEC.  125.  Sees.  178  to  302  of  the  Code  of  Civil  Procedure 
for  the  Kingdom  of  Serbia  shall  be  applicable  here,  insofar  as 
the  present  ordinance  does  not  contain  provisions  that  are  de- 
rogatory as  regards  these  articles. 

The  depositions  of  witnesses  made  before  the  Bureau  of 
Industrial  Property  under  oath  shall  have  the  same  probatory 
force  as  the  depositions  of  witnesses  made  before  the  Court. 

Costs  of  the  Suit 

SEC.  126.  In  its  decision  on  the  main  issue,  the  Opposition 
Section  shall  dispose  of  the  costs  of  the  case  by  adjudging  them 
against  the  losing  party. 

The  parties  shall  be  referred  to  the  ordinary  Civil  Courts 
as  regards  all  claims  of  private  right  that  may  arise. 

If  the  plaintiff  withdraws,  he  must  stand  the  expenses  of 
the  defendant. 

If,  after  the  request  has  been  notified  to  him  for  his  re- 
sponse, the  defendant  shall  refuse  to  acknowledge  the  with- 
drawal, the  case  shall  be  continued  and  the  question  at  issue 
decided.  For  the  period  that  the  request  shall  not  yet  have  been 
notified  for  response  thereto,  the  plaintiff  may  withdraw  it  with- 
out the  consent  of  the  defendant. 

Contents  of  Judgment 

SEC.  127.    The  preamble  of  the  judgment  must  indicate : 

The  designation  of  the  Sections  and  the  names  of  the  mem- 
bers that  have  participated  in  the  decision ;  the  names,  the  call- 
ing and  the  domicile  of  the  parties  and  of  their  attorneys  or 
representatives;  their  connection  with  the  case;  the  object  of 
the  litigation ;  and  the  decisions  of  the  Section  on  the  main  issue ; 
and  mention  regarding  costs. 

In  addition,  the  judgment  must  indicate  the  conclusions  of 
the  plaintiff;  what  he  has  alleged  and  the  proofs  that  he  has 
invoked;  what  the  defendant  has  alleged  in  his  response  or 
later ;  the  probatory  means  that  have  been  admitted,  those  that 
have  not  been  admitted  and  for  what  reasons;  exposition  of 
reasons  and  provisions  of  the  law  or  of  the  present  ordinance 
upon  which  the  judgment  is  based. 

If  an  oath  has  been  left  unsworn,  the  judgment  shall  indi- 


528  JUGOSLAVIA 

cate  the  person  that  must  make  it  good;  the  circumstances  re- 
garding which  the  oath  has  bearing ;  and  the  legal  consequences 
that  the  non-fulfillment  of  the  oath  will  entail. 

Judgments  shall  be  signed  by  all  the  members  and  by  the 
Secretary  of  the  Section;  the  copies  delivered  to  the  parties 
shall  be  signed  only  by  the  Chief  and  the  Secretary  of  the  Sec- 
tion ;  the  signatures  shall  always  be  accompanied  by  the  seal  of 
the  Bureau. 

Contrary  opinions  shall  be  given  in  the  judgment,  along 
with  signature,  and  shall  remain  secret  as  regards  the  parties 
until  the  judgment  shall  have  become  definitive. 

Records  of  Proceedings 

SEC.  128.  At  the  public  hearing  there  shall  be  drawn  up 
a  proces-verbal  that  shall  contain  the  same  preamble  as  the 
judgment  itself.  The  proces-verbal  shall  be  prepared  by  the 
Secretary,  who  must  be  a  sworn  technician  or  jurist  official,  and 
it  shall  be  certified  by  the  President. 

There  shall  be  entered  in  the  proces-verbal  all  declarations 
of  the  parties  and  of  their  attorneys,  the  depositions  of  the 
witnesses  and  the  reports  of  experts  and  persons  experienced 
in  the  profession,  who  shall  sign  their  depositions,  their  reports, 
or  the  expression  of  their  opinion,  as  well  as  the  decisions  ar- 
rived at  on  preliminary  and  actual  questions.  These  judgments 
shall  be  signed  by  all  the  members. 

SEC.  129.  When  the  debates  shall  have  terminated  and  the 
parties  shall  have  responded  to  all  questions  that  the  Section 
has  deemed  necessary  to  ask  them,  the  parties  or  their  attor- 
neys, the  witnesses  and  the  experts,  shall  absent  themselves,  so 
that  the  Section  shall  remain  alone  in  the  Audience  Chamber. 
After  deliberation  and  vote,  the  decision  shall  be  entered  in  the 
proces-verbal,  with  a  short  statement  of  the  reasons;  it  shall 
then  be  signed  by  all  the  members  and  by  the  Secretary,  and, 
if  possible,  notified  immediately  by  the  President. 

SEC.  130.  The  Secretary  shall  draw  up  the  judgment  by 
making  use  of  the  proceedings  and  of  this  proces-verbal  (Sec. 
127). 

SEC.  131.  Judgments  shall  become  definitive  when  they 
are  not  the  subject  matter  of  an  appeal  within  the  legal  delay 
or  when  the  Cassation  Section  confirms  them. 

SEC.  132.  The  parties  and  their  attorneys  shall  have  the 
right  to  consult  all  exhibits  of  the  files,  with  the  exception  of 
the  minority  opinions  expressed.  After  the  closing  of  the  litiga- 
tion, each  shall  have  the  right  to  examine  the  papers  in  the 
files  and  to  take  copies  thereof. 


JUGOSLAVIA  529 

Civil  Petition 

SEC.  133.  The  civil  petition  may  be  lodged  within  a  delay 
of  one  year  after  the  judgment  that  has  once  concluded  the  liti- 
gation has  become  definitive,  under  reservation,  however,  of  the 
rights  that  third  parties  in  good  faith  shall  have  acquired  in 
the  interval  as  regards  the  subject  matter  of  the  litigation. 

The  civil  petition  shall  be  brought  before  the  competent 
Section  that  has  rendered  the  first  judgment  in  the  case.  If 
there  it  has  been  adversely  decided,  this  judgment  may  likewise 
be  submitted  to  the  examination  of  the  Cassation  Section,  or 
there  may  be  applied,  as  regards  the  civil  petition,  the  provi- 
sions of  Sees.  426  to  432  of  the  Code  of  Civil  Procedure  of  the 
Kingdom  of  Serbia. 

Execution  of  Judgments 

SEC.  134.  Judgments  in  last  resort  of  the  Bureau  of  In- 
dustrial Property  shall  be  carried  out  in  the  same  manner  as 
judgments  in  last  resort  rendered  by  the  courts.  The  fines  ad- 
judged against  the  parties,  witnesses,  or  experts,  by  the  Bureau 
of  Industrial  Property  shall  be  turned  over  to  the  Treasury  of 
the  State. 

Appeals 

SEC.  136.  Neither  the  decisions  and  judgments  rendered 
by  the  Opposition  Section  or  during  the  course  of  the  prelim- 
inary procedure,  nor  decisions  rendered  during  the  course  of 
the  public  hearing  as  regards  questions  incidental  and  appear- 
ing in  the  proces-verbal,  may  constitute  the  subject  matter  of 
a  special  appeal ;  the  parties  may  lodge  complaint  only  through 
appeal  directed  against  the  basic  judgment. 

The  appeal  shall  be  accompanied  by  a  sufficient  number  of 
copies  to  be  forwarded  to  each  of  the  suitors.  Appeals  lodged 
too  late  may  be  set  right  by  the  Opposition  Section  in  summary 
fashion;  the  decision  on  this  point  may  constitute,  within  the 
thirty  days  that  follow  the  notification,  the  subject  matter  of 
an  appeal  to  the  Cassation  Section. 

Appeals  presented  in  opportune  time  shall  have  a  suspen- 
sive effect  as  regards  the  judgments  against  which  they  are 
directed.  The  Opposition  Section  shall  have  to  notify  the  ap- 
peal to  the  others  interested,  through  the  intermediary  of  the 
Referee,  so  that  they  may  file  their  response  within  a  delay  of 
thirty  days,  which  may  be  extended  only  for  grave  reasons. 

New  proofs  and  allegations  included  in  the  appeal  may  not 
be  taken  into  consideration. 

After  the  filing  of  the  answer,  or  after  the  expiration  of 
the  delay  fixed  for  this  purpose,  the  whole  case  shall  be  for- 


530  JUGOSLAVIA 

warded  for  judgment  by  the  Opposition  Section  to  the  Cassa- 
tion Section. 

SEC.  137.  The  Chancery  and  the  Archives  of  the  Cassa- 
tion Section  shall  be  located  at  the  Bureau  of  Industrial  Prop- 
erty. The  officials  of  this  Section  shall  be  named  annually  by 
the  Minister  of  Commerce  and  Industry,  on  proposal  of  the 
President  of  the  Bureau,  and  they  shall  be  chosen  from  among 
the  juristic  officials  named  by  Royal  Decree  and  possessing  the 
qualifications  necessary  for  being  Judge  of  First  Instance. 
In  each  particular  case  the  President  of  the  Bureau  of  Indus- 
trial Property  shall  designate  a  Secretary  that  shall  not  have 
participated,  as  regards  the  case  of  which  it  is  a  question,  either 
in  the  decision  of  the  Appellate  Section  or  in  that  of  the  Oppo- 
sition Section.  The  rest  of  the  necessary  personnel  shall  be 
designated  by  the  President  of  the  Bureau  of  Industrial  Prop- 
erty. The  Cassation  Section  shall  meet  when  necessary,  on  call 
of  its  Chief,  and  shall  give  decision  on  the  basis  of  the  facts 
and  proofs  contained  in  the  proceedings.  It  shall  decide  at  last 
resort. 

SEC.  138.  If  the  Cassation  Section  shall  consider  that  the 
case  has  not  been  made  the  subject  matter  of  ample  inquiry,  it 
shall  refer  the  same  to  the  Opposition  Section,  so  that  this  latter 
nxay^eoinpleHdff  f^h'owever,  if  it  considers  that  the  procedure  of 
this  Jailer-  i^p^rred  by  essential  formal  faults,  it  shall  annul 
the  declsion^e-nde-red  and  again  refer  the  case  to  the  said  Sec- 
tion, to  the  end  that  this  latter  decide  anew.  The  opinions  of 
the  Cassation  Section  shall  always  have  an  imperative  character. 

If,  for  other  reasons,  the  decision  does  not  respond  to  law 
or  to  the  present  ordinance,  or  if  the  explanation  of  reasons  or 
the  decision  itself  is  not  justified,  the  Cassation  Section  shall 
overrule  the  judgment  and  render  another. 

Decisions  that  are  in  conformity  with  the  laws  or  with  the 
present  ordinance  shall  be  confirmed.  The  confirmatory  orders 
shall  be  delivered  by  the  Cassation  Section  to  the  Bureau  of 
Industrial  Property  in  a  sufficient  number  of  copies  for  each 
of  those  interested  to  receive  one  and  in  order  that  one  shall 
remain  in  the  files. 

SEC.  139.  The  decision  of  the  Cassation  Section  shall  be 
executory  and  shall  be  notified  to  the  parties  through  the  inter- 
mediary of  the  Bureau  of  Industrial  Property. 

The  Cassation  Section  shall  only  deliberate  with  a  full 
bench  and  decide  by  a  majority  of  votes.  The  contrary  opinions 
of  certain  members  shall  be  noted  upon  the  judgment,  but  they 
shall  be  communicated  to  no  one.  In  its  decision,  the  Cassation 
Section  shall  likewise  pronounce  as  regards  the  costs  of  the 


JUGOSLAVIA  531 

case  after  the  decision  of  the  Opposition  Section. 

•  ••••••••• 

III.     TRADE  MARK  OPPOSITIONS 

SEC.  141.  The  prescriptions  that  govern  the  procedure  for 
the  avoidance  of  patents  (Sees.  117  to  134,  and  136  to  139)* 
shall  likewise  be  applied  for  the  avoidance  of  trade  marks. 

If  the  petitioner  shall  withdraw  from  his  action  on  the  basis 
of  Sec.  64,  paragraphs  Nos.  1  and  2,  and  if  the  defendant  shall 
accept  this  withdrawal,  the  Opposition  Section,  if  it  esteems  to 
have  sufficient  reasons  for  so  doing,  may  of  its  own  accord  carry 
to  a  conclusion  the  procedure  begun. 

SEC.  142.  Applications,  petitions,  memorials,  oppositions, 
responses  and  decisions  of  which  the  present  ordinance  makes 
mention  shall  be  delivered  to  the  Bureau  of  Industrial  Property. 
When  a  delay  is  fixed,  the  oppositions,  decisions,  responses  and 
memorials,  shall  be  reputed  to  have  been  presented  on  the  date 
on  which  they  were  delivered  to  the  mails  against  receipt.  This 
provision  shall  not  be  applied  to  the  deposits  of  ...  trade 
marks,  inasmuch  as,  in  the  cases  provided  for  in  Sees.  85,  103, 
and  llOf,  it  is  the  date  of  the  receipt  by  the  Bureau  of  Industrial 
Property  that  shall  constitute  the  date  of  the  deposit. 

CHAPTER  VI 

VIOLATIONS  OF  INDUSTRIAL 

•  •»>• 

Trade  Mark  Violations 

SEC.  145.  He  commits  a  violation  of  a  trade  mark  who, 
without  authorization  and  in  the  exercise  of  his  exploitation : 

1)  Puts  in  circulation  or  offers  for  sale  goods  provided 
with  a  mark  protected  in  favor  of  another ; 

2)  Counterfeits  to  this  end  a  mark  belonging  to  another. 
There  shall  likewise  be  infringement  of  a  mark  when  a 

person  makes  use  of  the  mark  of  another  with  changes  of  such 
small  importance,  or  of  such  kind,  that  the  ordinary  purchaser 
cannot  detect  the  difference  save  by  particularly  paying  atten- 
tion thereto. 

SEC.  146.    There  is  likewise  prohibited  the  illicit  employ- 

*For  provisions  in  question,  sec  sections  mentioned,  in  order. 

fSec.  85  (referring  to  applications  for  patents  of  invention)  says:  "Whoever 
shall  desire  to  obtain  a  patent  must  present  his  application,  directly  or  by  mail,  to 
the  Bureau  of  Industrial  Property,  in  writing  and  according  to  the  formality 
prescribed. 

"There  shall  be  considered  as  the  date  of  the  application  that  on  which  the 
application  was  received  by  the  Bureau  of  Industrial  Property." 

Sec.  103  (relating  to  designs  and  models)  and  Sec.  110  (relating  to  trade  marks) 
— see  above — are  of  like  import. 


532  JUGOSLAVIA 

ment  or  imitation  of  the  name,  the  firm,  or  other  designation, 
of  the  .establishment  of  another  for  distinguishing,  one's  own 
goods  or  those  of  another  intended  for  sale,  or  in  advertise- 
ments or  announcements. 

Actions  in  Abatement  of  Trouble  Caused 

SEO.  147.  In  every  violation  of  a  right  of  industrial  prop- 
erty, the  injured  party  may  demand  that  the  existence  of  his 
right  be  established;  that  other  violations  be  prohibited;  and 
that,  to  this  end,  necessary  measures  be  taken ;  he  may  demand, 
in  addition,,.that  the  damage  suffered,  and — if  the  violation  has 
been  committed  knowingly— the  profits  that  he  would  have  been 
able  to  realize,  be  awarded  to  him. 

>.  Litigated  matters  of  this  character  shall  be  of  the  jurisdic- 
tion of  the  ordinary  Civil  Courts,  which  are  likewise  competent 
in  commercial  matters. 

Violations  Committed  Knowingly 

SEC.  148.  For  the  violations  foreseen  in  Sec.  .  .  .  145, 
which  are  committed  knowingly,  and  for  punishable  acts,  there 
shall  be  applied,  in  whatever  concerns  competence  for  trying 
and  the  infliction  of  penalties  and  in  whatever  concerns  proce- 
dure and  penalties : 

1)  In  the  territories  in  which  the  Austrian  laws  are  yet 
valid :  ...  in  matters  concerning  trade  marks,  Sees.  26  to  28 
of  the  Law  of  January  6,  1890*   (Reichsgesetzhlatt,  No.  19) ; 

2)  In  the  old  Hungarian  territories :  .  .  .  for  trade  marks, 
Sees.  26  to  28  of  the  Second  Legislative  Article  of  1890f ; 

3)  In  the  Kingdom  of  Serbia  and  Montenegro:  ...  for 
trade  marks,  Arts.  24  to  31  of  the  Laws  of  May  30,  1884$ ;  rela- 
tive to  the  protection  of  marks  of  manufacture  and  of  commerce 
in  the  Kingdom  of  Serbia. 

*For  sections  in  question,  see  Austrian  Trade  Mark  Law. 

fFor  sections  in  question>  see  Hungarian  Trade  Mark  Law. 
f'TiTLE  III.    OFFENSES  AND  PENALTIES 

"ART.  20.  Any  violation  of  the  exclusive  right  to  a  mark,  whether  by  illicit 
use  or  by  counterfeiting  it,  gives  to  the  injured  owner  the  right  to  demand  the 
injunction,  of  the  fraudulent  mark,  and  its  removal  from  the  merchandise.  More- 
over, the  owner  may  demand  the  seizure  and  destruction  not  only  of  the  mark,  but 
also  of  the  tools  and  instruments  used  in  their  fabrication.  The  courts  shall  fix  in 
conformity  with  the  provisions  of  the  Civil  Code  the  amount  of  damages  to  be  paid 
to  the  injured  party.  The  owner  can  demand  that,  in  lieu  of  damages,  the  inf ringer 
be  condemned  to  a  fine  of  from  50  to  300  dinars,  to  his  benefit.  The  court  may 
agree  to  this  motion  and  assign  to  the  injured  party  the  said  amount  as  indemnity. 
These  provisions  are  applicable  without  prejudice  to  the  penalties  prescribed 
m  Arts.  23,  24  and  25  of  this  law. 

•  •!  !••!•!  •  •  •  •  .  •  k 

"ART.  23.  All  merchandise  bearing  unlawfully  the  mark  of  a  Serbian  trader  or 
producer,  or  in  general  a  mark  indicating  it  as  of  Serbian  origin,  is  prohibited  from 
entry,  transit  and  storage  in  Serbia.  Seizure  of  merchandise  of  this  nature  may 
be  made  either  on  the  request  of  the  local  authorities  or  of  the  interested  party. 
The  goods  shall  be  held  pending  a  determination  by  the  judicial  authorities. 


JUGOSLAVIA  533 

Criminal  prosecution  may  be  lodged  only  on  complaint  of 
the  injured  party. 

Fines  shall  be  inflicted  to  the  profit  of  the  Treasury  of  the 
State. 

SEC.  149.  In  order  to  determine  violation  of  a  right  of 
industrial  property,  there  shall  be  taken  into  consideration  the 
extent  of  the  right  injured,  such  as  is  shown:  .  .  .  for  trade 
marks,  by  the  mark  itself  and  by  the  character  of  the  goods  to 
which  it  is  affixed  (Sec.  Ill,  No.  2). 

Military  Jurisdiction 

SEC.  150.  The  Military  Tribunals  shall  be  competent  to 
try  all  infractions  prohibited  by  the  present  ordinance,  when 
they  shall  have  been  committed  by  soldiers. 

False  Indication  of  Origin 

SEC.  151.  There  is  prohibited  the  importation  of  any 
foreign  merchandise  marked  as  if  it  were  of  the  origin  of  the 
country.  There  are  also  prohibited  the  passage  in  transit  and 
the  storage  of  such  goods.  Goods  of  this  character  shall  be 
sequestered  through  judicial  order. 

This  interdiction  shall  endure  until  the  case  shall  have  been 
settled  by  the  Courts. 

Actions  Brought  Before  the  Civil  Courts 
SEC.  152.    With  the  objects  for  the  manufacture  of  which 
violation  has  been  attempted  against  a  right  of  industrial  prop- 
erty, and  with  the  utensils  and  installations  that  serve  exclu- 
sively or  essentially  in  committing  the  violation,  proceedings 

"ART.  24.  If  fraudulent  intent  is  established,  the  offender  shall  be  liable  to  a 
fine  of  from  50  to  500  dinars  to  the  profit  of  the  Treasury,  and  that  without  preju- 
dice to  the  penalties'  prescribed  by  the  Penal  Code  and  by  Art.  20  of  this  law. 

"ART.  25.  For  a  second  offense  the  fine  is  doubled.  For  a  third  offense  the 
offender  shall  be  further  liable  to  imprisonment  of  from  fifteen  to  sixty  days,  and 
his  establishment  may  be  closed  for  a  period  of  from  three  to  six  months.  Duress 
may  take  place  when  one-third  of  the  offender's  property  shall  not  suffice  to  pay 
the  fine  incurred.  Duress  shall  be  calculated  at  the  rate  of  one  day  in  prison  to 
5  dinars  fine. 

"ART.  26.  If  the  accused  is  acquitted,  and  at  the  same  time  declares  that  the 
complaint  is  malicious,  the  court  may  on  his  demand  condemn  the  plaintiff  to  pay 
damages  in  conformity  with  Art.  20  of  this  law. 

"ART.  27.  Any  infringement  of  the  provisions  of  Art.  5  shall  subject  the 
offender  to  a  fine  of  from  5  to  200  dinars  with  imprisonment  of  from  one  to  forty 
days.  These  penalties  are  to  be  fixed  by  the  court. 

"ART.  28.  For  all  offenses  contemplated  in  this  law  the  culprit  shall  pay  a  tax 
of  30  dinars  in  stamps  after  judgment  has  been  pronounced. 

TITLE  IV.    COMPETENT  TRIBUNALS  AND  PROCEDURE 

"A»T.  29.  The  courts  of  first  instance  and  the  Tribunal  of  Commerce  of  Bel- 
grade may  take  cognizance  of  suits  brought  under  this  law< 

"ART.  30.  The  party  in  interest  may  sue  before  the  Court  of  Appeals  within 
fifteen  days. 

"ART.  31.  Action  brought  under  this  law  may  be  stopped  by  the  desistance  of 
the  plaintiff.  In  that  case  the  fee  to  be  paid  shall  be  reduced  one-half.." 


534  JUGOSLAVIA 

shall  be  brought  in  the  sense  of  the  provisions  enumerated  in 
Sec.  148,  even  if  it  be  a  question  of  a  civil  action. 

Petitions  for  Determination  of  Rights 

SEC.  153.  Any  person  may  demand  of  the  Bureau  of  In- 
dustrial Property  that  it  shall  establish  through  a  decision: 
that  the  goods  that  it  is  proposed  to  manufacture,  to  put  in 
circulation,  or  offer  for  sale,  or  to  utilize,  or  that  a  process  that 
it  is  proposed  to  put  in  application,  does  not  fall,  in  whole  or 
in  part,  under  the  interdiction  of  a  determined  patent*  and  that, 
thus,  no  violation  of  patent  will  be  committed. 

Such  a  petition  must  be  accompanied  by  as  many  copies  as 
there  are  parties  interested  on  the  other  side.  It  shall  be  of 
the  competence  of  the  Opposition  Division.  On  petition,  there 
must  likewise  be  included  the  necessary  number  of  exact  and 
clear  drawings  and  of  descriptions  of  the  object  or  of  the  process 
of  manufacture  of  which  it  is  a  question. 

Such  a  demand  may  refer  only  to  a  single  patent,  eventu- 
ally to  patents  of  addition  that  are  related  thereto,  which  must 
be  enumerated  exactly. 

When  the  defendant  proves  that,  before  having  received 
the  petition,  he  has  himself  lodged  complaint  against  the  plain- 
tiff, with  the  competent  authority,  for  violation  of  his  patent, 
and  that  his  complaint,  which  concerns  the  same  object,  has  not 
as  yet  been  decided  definitively  through  a  judicial  order,  the 
procedure  begun  in  conformity  with  the  present  provision  shall 
be  brought  to  an  end  and  the  petition  rejected. 

The  procedure  to  be  followed  for  the  examination  and  de- 
cision concerning  this  petition  shall  be  that  which  is  prescribed 
for  the  action  for  the  avoidance  of  a  patent,  with  the  sole  modi- 
fication that  the  costs  of  procedure  shall  be  borne  by  the  peti- 
tioner. 

If  the  Section  establishes  that  the  manufacture,  the  putting 
into  circulation,  or  the  offering  for  sale,  of  the  object  in  ques- 
tion, or  the  employment  of  the  process  of  manufacture  whereof 
it  is  a  question  does  not  constitute  a  violation  of  patent,  it  shall 
give  legal  acknowledgment  to  the  petition  for  the  determination 
of  rights ;  in  the  contrary  case,  it  shall  reject  the  petition.  These 
decisions  of  the  Opposition  Section  may — the  same  as  any  other 
decisions — form  the  object  of  an  appeal  to  the  Cassation  Section. 

When  the  decision  through  which  it  is  established  that  the 
petitioner  does  not  commit  a  violation  of  the  patent  of  another 
has  become  definitive,  the  patentee  may  take  against  the  peti- 
tioner— so  long  as  the  latter  remains  within  the  limit  of  the 

*See  last  paragraph  of  this  section. 


JUGOSLAVIA  535 

decision  of  the  Section — no  legal  step  for  violation  of  his  right. 

There  shall  be  treated  in  the  same  way  and  according  to 
the  same  procedure  the  question  of  knowing  whether  a  person 
has  the  exclusive  right  to  make  use  of  a  determined  mark,  or 
the  question  of  the  right  of  priority,  or  that  concerned  with  the 
transfer  of  this  right,  when  it  is  contested,  or,  finally,  that  of 
knowing  whether  a  person  may  employ  a  mark  registered  by 
another  for  a  class  of  goods  other  than  that  for  which  the  regis- 
tration was  granted. 

CHAPTER  VII 

FEES 

SEC.  156.  For  each  .  .  .  mark  there  shall  be  paid,  on  the 
deposit  of  the  application,  a  filing  fee  of  30  dinars,  and  for  each 
year  of  protection  an  annuity  of  25  dinars. 

The  annuities  shall  be  payable  in  advance,  either  at  one 
time  for  several  years  or  year  by  year,  counted  from  the  date 
of  the  registration.  The  annuity  for  the  first  year  shall  be  pay- 
able on  the  filing  of  the  .  .  .  mark;  the  annuities  for  the  fol- 
lowing years  shall  be  payable  before  the  expiration  of  the  term 
for  which  the  preceding  annuity  was  paid.  The  annuities  for 
the  following  years  must  be  paid,  at  latest,  three  months  after 
the  term  fixed  for  this  payment.  In  this  latter  case,  there  shall 
be  paid  an  additional  fee  of  20  dinars. 

Annuities  may  be  paid  by  any  person. 

Modification  of  Description 

SEC.  157.  Any  subsequent  modification  of  the  description 
of  a  .  .  .  mark  shall  occasion  the  payment  of  a  fee  of  20  dinars, 
if  it  is  applied  for  by  the  applicant. 

There  shall  be  no  fee  to  pay  if  the  modification  is  demanded 
by  the  Office. 

Other  Fees 

SEC.  158.  In  addition  to  the  precited  fees,  there  shall  be 
paid,  on  deposit: 

2)  Of  an  appeal  to  the  Appellate  Section,  50  dinars. 

This  fee  is  likewise  payable:  for  appeals  of  patent  agents 
and  consulting  engineers  against  the  refusal  to  inscribe  them 
in  the  Register  (Sec.  76)  and  for  all  other  appeals  lodged,  in 
the  tenor  of  Sec.  77,  against  the  decisions  of  the  President  of 
the  Bureau  or  Chief  of  the  Cassation  Section. 

3)  Of  an  appeal  to  the  Cassation  Section  (Sec.  136),  100 


536  JUGOSLAVIA 

dinars ; 

4)  Of  a  petition  (application)  to  the  Opposition  Section, 
100  dinars; 

5)  For  registration  of  patent  agents  or  consulting  en- 
gineers newly  named,  250  dinars; 

6)  For  the  transfer  or  the  registration  of  an  assignment 
of  a  right  of  industrial  property  .  .  .   ;  for  the  registration  of 
any  modification  in  the  Eegister  of  Patent  Agents  or  Consult- 
ing Engineers,  or  in  the  list  of  Probationary  Patent  Agents; 
for  the  annotations  that  are  foreseen  in  the  present  ordinance 
or  in  the  ordinance  regarding  patent  agents,  25  dinars ; 

7)  For  the  annotation  of  a  litigation  in  the  Eegister,  20 
dinars ; 

O  y       .  •  •  •  •  •  •  •  •  • 

If  the  fees  enumerated  under  numbers  1  to  8  are  not  paid 
in  full,  or  if  they  are  not  paid,  or  if  they  are  not  paid  in  the 
manner  prescribed  in  the  present  Ordinance,  the  petition  that 
they  concern  shall  be  considered  as  null  and  void. 

SEC.  159.  .  .  .  the  certificate  attesting  that  the  .  .  .  mark 
is  protected  shall  be  subject  to  no  special  fee. 

In  all  matters  treated  in  accordance  with  the  procedure 
applied  before  the  Civil  Courts,  there  shall  be  paid  the  fees 
foreseen  in  the  tariff  annexed  to  the  law  concerning  fees  in  the 
Kingdom  of  Serbia,  chapter  concerning  matters  of  contention 
and  non-conscientious  matters.  Petitions  that  tend  to  the  obten- 
tion  of  a  right  of  industrial  property  or  of  a  right  of  priority 
may,  in  exceptional  cases,  be  received  without  fee,  if  they  are 
accompanied  by  no  fee  or  insufficient  fee;  however,  the  peti- 
tioner must  be  reminded  of  the  provisions  of  the  law  concerning 
fees  and  requested  to  pay  or  to  complete  the  payment  of  the 
fee  within  the  delay  fixed ;  he  shall  be  liable  only  for  the  ordinary 
fee,  without  availing  himself  of  Sec.  50  of  the  law  concerning 
fees.  However,  the  notification  fee  (postal  tariff)  must  be  paid. 

If  the  petitioner  pays  or  completes  the  payment  within  the 
delay  fixed,  the  petition  shall  be  considered  as  having  been  pre- 
sented regularly  and  in  opportune  time ;  in  the  contrary  case,  it 
shall  be  filed  in  the  archives  without  other  examination. 

Persons  that  shall  establish  that  they  are  indigent,  through 
a  certificate  from  the  competent  authorities,  shall  be  excused 
from  the  payment  of  fees  only  in  litigations  lodged  before  the 
Bureau  of  Industrial  Property. 

CHAPTER  VIII 

FINAL  PROVISIONS 
SEC.  160.    Whoever  shall  have  ...  a  product  appear  in 


JUGOSLAVIA  537 

an  international  or  national  exposition,  official  or  officially  recog- 
nized, may  claim,  at  latest,  within  the  three  months  that  follow 
the  closing  of  the  exposition,  the  protection  of  his  right  of  in- 
dustrial property,  with  priority  counting  from  the  day  on  which 
the  object  in  question  was  exhibited  at  the  exposition. 

SEC.  161.  With  reference  to  the  citizens  or  subjects  of 
foreign  countries,  there  shall  be  applied,  in  whatever  concerns 
the  protection  of  industrial  property,  the  provisions  of  treaties 
concluded  with  their  country  of  origin. 

If  there  exists  no  treaty,  the  citizens  or  subjects  of  a  foreign 
country  shall  enjoy  the  protection  vouchsafed  by  the  present 
ordinance  only  in  case  of  reciprocity. 

It  shall  be  incumbent  on  him  that  invokes  protection  to 
show  that  reciprocity  exists. 

SEC.  162.  Any  person  that  enjoys,  on  the  date  of  the  entry 
into  force  of  the  present  ordinance,  a  right  of  industrial  prop- 
erty in  any  part  whatever  of  the  Kingdom,  and  shall  desire  that 
this  right  be  protected  for  the  whole  legal  term,  in  conformity 
with  the  provisions  of  the  present  ordinance,  in  the  territory  in 
which  it  has  up  to  the  present  time  been  protected,  shall  have 
his  right  registered  at  the  Bureau  of  Industrial  Property,  after 
the  entry  into  force  of  the  present  ordinance,  and  this,  at  latest, 
within  the  three  months  that  follow  the  date  to  be  fixed  by  a 
special  order.  If  this  registration  is  not  applied  for  within  the 
delay  fixed,  the  protection  heretofore  granted  shall  become 
extinct. 

On  express  application  of  the  petitioner,  the  Bureau  of  In- 
dustrial Property  may  permit  that  the  effects  of  his  right  shall 
extend  to  all  the  territory  of  the  Kingdom,  for  the  period  that 
yet  remains  to  run.  Applications  shall  be  deposited  in  con- 
formity with  the  following  provisions : 

...«•«..»• 

Trade  Maries 

Marks  shall  be  deposited  anew  in  conformity  with  the  pre- 
scriptions of  Sees.  110  to  112  of  the  present  ordinance  and  they 
may  be  protected  for  an  unlimited  term.  The  depositor  shall 
obtain  the  acknowledgment  of  the  right  of  priority  emanating 
from  the  old  registration  if  he  proves  his  right  to  the  mark  by 
means  of  an  extract  from  the  Register  officially  certified  by  the 
competent  authority  with  which  he  has  effected  the  first  deposit, 
and  if  he  pays  in  opportune  time  the  deposit  fee  foreseen  in 
Sec.  156,  as  well  as  the  current  annuity. 

.  .  .  Marks  that  up  to  the  present  time  have  been  valid 
only  in  certain  parts  of  the  Kingdom,  and  whose  effects  are  in 
the  future  to  extend  to  the  entire  Kingdom,  must  not  be  suscep- 


538  JUGOSLAVIA 

tible  of  endangering  rights  acquired  by  third  parties  in  the  ter- 
ritories in  which  these  objects  were  not,  up  to  the  present, 
protected. 

The  annuities  for  .  .  .  marks  that,  prior  to  the  entry  into 
force  of  the  present  ordinance,  have  been  paid  in  stamps,  shall 
be  calculated  as  fees  paid. 

.  .  .  Marks  that  shall  have  been  registered  in  this  man- 
ner at  the  Bureau  of  Industrial  Property  shall  be  considered  as 
conferring  independent  rights  of  industrial  property ;  litigations 
to  which  the  validity  of  these  rights  gives  occasion  shall  be  of 
the  competence  of  the  Bureau  of  Industrial  Property. 

The  prescriptions  of  the  present  paragraph  shall  not  be 
applicable  to  rights  of  industrial  property  that  have  been 
granted,  subsequent  to  October  27,  1918,  by  authorities  or  cor- 
porations within  the  territory  of  the  present  Austria  and  Hun- 
gary, within  the  limits  fixed  by  the  Treaty  of  Peace. 

These  provisions  shall  be  derogatory  in  no  way  to  those  of 
the  Treaties  of  Peace. 

SEC.  163.  The  Minister  of  Commerce  and  Industry  is  au- 
thorized to  fix  in  detail,  through  executory  regulations,  the 
procedure  to  be  followed  for  .  .  .  the  registration  of  .  .  . 
marks;  in  addition,  he  shall  elaborate  ordinances  concerning 
the  organization  of  the  Bureau  and  the  exercise  of  the  profes- 
sion of  patent  agent  and  consulting  engineer. 

SEC.  164.  Counting  from  its  entry  into  force,  the  present 
ordinance  shall  replace  the  laws  and  legal  prescriptions  through- 
out the  territory  of  the  Kingdom  that  have  been  heretofore 
valid  regarding  the  protection  of  industrial  property;  laws  and 
legal  prescriptions  that  come  into  conflict  in  any  way  whatso- 
ever with  the  present  ordinance  are  abrogated.  At  the  same 
time  there  is  abrogated  No.  6  of  Art.  10  of  the  Ordinance  of 
April  30,  1919,  concerning  the  organization  of  the  Ministry  of 
Commerce  and  Industry. 

SEC.  165.  The  present  ordinance  shall  become  of  effect  as 
soon  as  it  shall  have  been  signed  by  the  King  and  published  in 
the  official  sheet  of  the  Kingdom  (Sluzbene  Norvine)  ;*  it  shall 
acquire  force  of  law  thirty  days  after  the  date  of  its  publication 
in  the  precited  official  sheet. 

We  charge  Our  Minister  of  Commerce  and  Industry  to  pub- 
lish the  present  ordinance,  and  all  Our  Ministers  to  watch  that 
it  be  carried  out.  We  order  the  authorities  to  proceed  as  the 
present  ordinance  provides  and  all  persons  to  comply  with  same. 

*Published  November  27,  1920. 


KOREA 

UNITED  STATES-JAPAN  TREATY  OF  MAY  19,  1908. 
EFFECTIVE  AUGUST  16,  1908* 

ARTICLE  I.  The  Japanese  Government  shall  cause  to  be  en- 
forced in  Korea  simultaneously  with  the  operation  of  this  con- 
vention, laws  and  regulations  relative  to  ...  trade  marks  .  .  . 
similar  to  those  which  now  exist  in  Japan. 

These  laws  and  regulations  are  to  be  applicable  to  Ameri- 
can citizens  in  Korea  equally  as  to  Japanese  and  Korean  sub- 
jects. In  case  the  existing  laws  and  regulations  of  Japan  re- 
ferred to  in  the  preceding  paragraph  shall  hereafter  be  modified, 
those  laws  and  regulations  enforced  in  Korea  shall  also  be  modi- 
fied according  to  the  principle  of  such  new  legislation. 

ART.  II.  The  Government  of  the  United  States  of  America 
engages  that  in  case  of  the  infringement  by  American  citizens 
of  ...  trade  marks  .  .  .  entitled  to  protection  in  Korea,  such 
citizens  shall  in  these  respects  be  under  the  exclusive  jurisdic- 
tion of  the  Japanese  courts  in  Korea,  the  extraterritorial  juris- 
diction of  the  United  States  being  waived  in  these  particulars. 

ART.  III.  Citizens  of  possessions  belonging  to  the  United 
States  shall  have  in  respect  to  the  application  of  the  present  con- 
vention the  same  treatment  as  citizens  of  the  United  States. 

ART.  IV.  Korean  subjects  shall  enjoy  in  the  United  States 
the  same  protection  as  native  citizens  in  regard  to  ...  trade 
marks  .  .  .  upon  the  fulfillment  of  the  formalities  prescribed 
by  the  laws  and  regulations  of  the  United  States. 

ART.  V.  ...  trade  marks  .  .  .  registered  in  Japan  by 
citizens  of  the  United  States  prior  to  the  enforcement  of  the 
laws  and  regulations  mentioned  in  Article  I  hereof  shall  with- 
out further  procedure  be  entitled  under  the  present  convention 
to  the  same  protection  in  Korea  as  is  or  may  hereafter  be  there 
accorded  to  the  same  industrial  .  .  .  properties  similarly  .  .  . 
registered  by  Japanese  or  Korean  subjects. 

.  .  .  trade  marks  .  .  .  duly  registered  in  the  United  States 
by  citizens  or  subjects  of  either  high  contracting  party  or  by 
Korean  subjects  prior  to  the  operation  of  the  present  conven- 
tion shall  similarly  be  entitled  to  ...  registration  in  Korea 
without  the  payment  of  any  fees,  provided  that  said  .  .  .  trade 
marks  .  .  .  are  of  such  a  character  as  to  permit  of  their  .  .  . 
registration  under  the  laws  and  regulations  above-mentioned, 

*  Matter  not  relating  to  trade  marks  omitted. 


540  KOREA 

and  provided  further  that  such  .  .  .  registration  is  effected 
within  a  period  of  one  year  after  this  convention  comes  into 
force. 

ART.  VI.  The  Japanese  Government  engages  to  extend  to 
American  citizens  the  same  treatment  in  Korea  in  the  matter 
of  protection  of  their  commercial  names  as  they  enjoy  in  the 
dominions  and  possessions  of  Japan  under  the  convention  for 
the  protection  of  industrial  property  signed  at  Paris  March 
20,  1883. 

"Hong"  marks*  shall  be  considered  to  be  commercial 
names  for  the  purpose  of  this  convention. 


JAPAN  IMPERIAL  ORDINANCE  NO.  198,  EFFECTIVE 

AUGUST  16, 1908 

ARTICLE  1.  In  regard  to  trade  marks  in  Korea,  the  trade 
mark  law  shall  be  followed;  but  in  the  said  law  the  term  "Em- 
pire" shall  correspond  to  " Korea";  "Minister  of  Agriculture 
and  Commerce  "  to  * '  Resident-General " ;  * l  Patent  Bureau ' '  to 
"Patent  Bureau  of  the  Residency-General";  "Courts  of  Law" 
to  "Residencies  and  the  Residency-General  Court";  "Local 
Courts"  to  "Residencies;"  and  "Supreme  Court"  to  "Resi- 
dency-General Court." 

The  term  ' '  Empire ' '  mentioned  in  Art.  6  of  the  Patent  Law 
shall  be  understood  to  mean  "Japan"  or  "Korea,"  according 
to  the  application  of  this  ordinance. 

ART.  2.  Trade  marks  bearing  devices  identical  with  or 
similar  to  the  Imperial  crest,  national  flag,  military  or  naval 
flags,  or  orders  of  merit  of  Japan  or  Korea,  or  the  national 
flags  of  other  countries,  may  not  be  registered. 

If  a  registered  trade  mark  is  in  contravention  of  the  pro- 
visions of  the  preceding  paragraph,  the  registration  thereof 
shall  be  invalid. 

A  person  who  has  discovered  that  a  registered  trade  mark 
falls  under  the  provisions  of  the  preceding  paragraph  may  apply 
for  a  trial  to  the  Patent  Bureau  of  the  Residency-General  for 
the  purpose  of  invalidating  the  registration  thereof. 

ART.  3.  This  ordinance  shall  accord  the  same  protection 
to  Japanese  and  to  Korean  subjects  with  reference  to  trade 
marks,  and  shall  be  also  applicable  to  subjects  or  citizens  of 
countries  which  do  not  exercise  extraterritorial  jurisdiction  in 
Korea  with  reference  to  the  protection  of  trade  marks. 

*  Trade  names.    Ed. 


KOREA  541 

SUPPLEMENTARY  AETICLES 

ART.  4.  This  ordinance  shall  take  effect  on  August  16, 
1908. 

ART.  5.  Trade  marks  registered  in  Japan  prior  to  the 
operation  of  this  ordinance  by  Japanese  subjects,  Korean  sub- 
jects, or  American  citizens  shall  be  regarded  as  trade  marks 
registered  in  Korea  in  accordance  with  this  ordinance ;  but  the 
period  for  the  exclusive  use  of  the  said  trade  marks  shall  cor- 
respond to  the  period  for  exclusive  use  of  the  same  in  Japan. 

ART.  6.  With  reference  to  merchandise  which  has  borne, 
prior  to  the  operation  of  this  ordinance,  a  trade  mark  entitled 
to  protection  in  accordance  with  the  provisions  of  the  preceding 
article,  or  a  trade  mark  similar  to  the.  same,,  the  provisions  of 
Art.  16  of  the  trade  mark  law  shall  be  applicable  only  to  such 
persons  as,  after  six  months  from  the  date  of  operation  of  this 
ordinance,  give,  sell,  or  store  for  sale  the  said  merchandise. 

ART.  7.  In  regard  to  trade  marks  registered  in  the  United 
States  prior  to  the  operation  of  this  ordinance  by  Japanese 
subjects,  Korean  subjects,  or  American  citizens,  no  registra- 
tion fees  shall  be  collected  if  the  owners  of  the  said  trade  marks 
apply  for  registration  to  the  Patent  Bureau  of  the  Residency- 
General  within  one  year  from  the  date  of  operation  of  this 
ordinance. 


IMPERIAL  ORDINANCE  NO.  201,  EFFECTIVE  AUGUST 

16,  1908 

ARTICLE  1.  The  validity  of  rights  of  ...  trade  mark  .  .  . 
enjoyed  in  Japan  by  Japanese  or  Korean  subjects  shall  extend 
to  Japanese  and  Korean  subjects  in  the  Province  of  Kwantung 
and  other  countries  where  Japan  may  exercise  extraterritorial 
jurisdiction. 

ART.  2.  The  provisions  relating  to  penalties  in  the  .  .  . 
trade  mark  law  .  .  .  shall  be  applicable  to  Japanese  and  Korean 
subjects  in  the  Province  of  Kwantung  and  other  countries  where 
Japan  may  exercise  extraterritorial  jurisdiction. 

ART.  3.  With  reference  to  industrial  property  rights  .  .  . 
enjoyed  in  Japan  by  subjects  or  citizens  of  countries  other  than 
Japan  and  Korea,  the  provisions  of  the  two  preceding  articles 
shall  be  applicable  only  when  such  other  countries  afford  pro- 
tection of  industrial  property  rights  ...  to  Japanese  and 
Korean  subjects  in  foreign  countries  where  the  said  countries 
may  exercise  extraterritorial  jurisdiction  and  when  the  said 
countries  do  not  exercise  extraterritorial  jurisdiction  in  Korea 


542  KOREA 

with    reference    to    the    protection    of    industrial    property 
rights.   .    .    . 

SUPPLEMENTARY  ARTICLES 

ART.  4.  This  ordinance  shall  take  effect  on  August  16, 
1908. 

ART.  5.  Any  person  who  has  on  hand  for  purpose  of  sale 
at  the  time  this  ordinance  takes  effect,  merchandise  fraudu- 
lently bearing  trade  marks  owned  by  another  person  and  pro- 
tected by  virtue  of  this  ordinance,  or  bearing  an  imitation  of 
such  a  mark,  shall  remove  or  cancel  the  said  trade  marks  or 
withdraw  the  said  merchandise  from  the  market  in  China  within 
six  months  after  the  operation  of  this  ordinance. 


LATVIA 

LAW  OF  MAY  17,  1922 

I.  The  following  paragraphs  of  the  old  Russian  Regula- 
tions of  1913  regarding  industry*  are  amended,  in  whatever 
concerns  Latvia,  in  the  following  manner : 

SEC.  127.  When  a  manufacturer  or  a  merchant  desires  to 
make  exclusive  use  of  a  mark  for  the  needs  of  his  establishment, 
he  must  deposit  the  mark  with  the  Department  of  Industry.  To 
the  end  of  effecting  its  deposit,  he  shall  address  an  application 
to  the  Department  of  Industry  and  shall  annex  thereto  ten  fac- 
similes and  a  description  of  the  mark.  He  shall  indicate  in  his 
application  for  what  goods  he  intends  to  make  use  of  the  mark. 

SEC.  129.  The  mark  deposited  shall  contain,  in  the  lan- 
guage of  the  country,  the  following  indications : 

(1)  The  Christian  name  (or  simply  the  initials)  of  the 
proprietor  of  the  industrial  or  commercial  enterprise,  and  the 
family  name  or  the  designation  of  the  firm  in  its  entirety ; 

(2)  The  place  at  which  the  establishment  is  located.    In- 
scriptions in  foreign  languages  are  tolerated  only  by  way  of 
addition. 

NOTE  :  The  Minister  of  Finances  may  authorize  exceptions 
in  cases  in  which  the  character  of  the  merchandise,  its  dimen- 
sions, or  other  reasons,  render  the  observation  of  this  para- 
graph impossible. 

SEC.  132.  The  marks  deposited  shall  be  examined  by  the 
Patent  Committee  of  the  Department  of  Industry  and,  if  all  the 
conditions  prescribed  by  law  have  been  fulfilled,  the  Department 
of  Industry  will  deliver  a  certificate  giving  authorization  to 
make  use  of  the  mark. 

SEC.  137.  The  delivery  of  the  certificate  giving  authoriza- 
tion to  make  exclusive  use  of  a  mark  shall  be  published  in  the 
Valdibas  Vestnesis. 

SEC.  143.  The  Department  of  Industry  shall  maintain  a 
Trade  Mark  Register  and  it  shall  make  a  collection  thereof  that 
may  be  consulted  by  all  persons  interested.  Marks  protected 
shall  be  sent  to  the  Committee  of  the  Bourse  and,  if  the  Minister 
of  Finances  deems  it  expedient,  to  the  Administrations  of  the 
cities. 


*  The  unamended  provisions  of  the  Russian  Trade  Mark  Law  are  substan- 
tially the  same  as  Esthonia:     Law  of  April  15,  1921,  which  see. 


544  LATVIA 

FEES 
•         ••••••••« 

(2)     Trade  marks:    Deposit  fee,  10  francs;  annual  tax, 
in  addition  to  the  first,  5  francs ;  fee  for  assignment,  10  francs ; 

(5)  Appeal  against  a  decision  of  the  Patent  Committee, 
10  francs ;  for  expenses,  in  case  it  is  necessary  to  require  experts 
or  witnesses,  20  francs ; 

(6)  For  delivery  of  a  duplicate  of  a certificate  of 

trade  mark,  etc.,  5  francs ; 


LEEWARD  ISLANDS 

ACT  NO.  11  OF  1887 

(Nos.  33/87  and  17/90) 

Short  title 

1.  This  Act  may  be  cited  as  the  Trade  Marks  Act,  1887. 

Definitions 

2.  In  and  for  the  purposes  of  this  Act,  unless  the  context 
otherwise  requires: 

"Person"  includes  a  body  corporate; 

"The  Court"  means  the  Supreme  Court  of  the  Leeward 
Islands ; 

"The  Governor"  means  the  Governor  of  the  Leeward 
Islands ; 

"Registrar"  means  the  Chief  Registrar  of  the  Supreme 
Court  of  the  Leeward  Islands ; 

"Prescribed"  means  prescribed  by  general  Rules  under  or 
within  the  meaning  of  this  Act. 

REGISTRATION  OF  TRADE  MARKS 
Application  for  registration 

3.  (1)  The  Registrar  may,  on  application  by  or  on  behalf 
of  any  person  claiming  to  be  the  proprietor  of  a  trade  mark, 
register  the  trade  mark. 

(2)  The  application  must  be  made  in  the  form  set  forth  in 
the  Schedule  to  this  Act,  or  in  such  other  form  as  may  be  from 
time  to  time  prescribed,  and  must  be  left  at,  or  sent  by  post 
to,  the  Trade  Marks  Office  in  the  prescribed  manner. 

(3)  The  application  must  be  accompanied  by  the  prescribed 
number  of  representations  of  the  trade  mark,  and  must  state 
the  particular  goods  or  classes  of  goods  in  connection  with 
which  the  applicant  desires  the  trade  mark  to  be  registered. 

(4)  The  Registrar  may,  if  he  thinks  fit,  refuse  to  register 
a  trade  mark,  but  any  such  refusal  shall  be  subject  to  appeal 
to  the  Court,  and  the  Court  shall  have  jurisdiction  to  hear  and 
determine  the  appeal,  and  make  any  order  determining  whether, 
and  subject  to  what  conditions,  if  any,  registration  is  to  be 
permitted. 

(5)  When  an  applicant  for  the  registration  of  a  trade  mark, 
otherwise  than  under  an  international  convention,  is  out  of  the 
Colony,  at  the  time  of  making  the  application,  he  shall  give  the 
Registrar  an  address  for  service  in  the  Colony,  and,  if  he  fails 


546  LEEWARD  ISLANDS 

to  do  so,  the  application  shall  not  be  proceeded  with  until  the 
address  has  been  given. 

Limit  of  time  for  proceeding  with  registration 

4.  Where  registration  of  a  trade  mark  has  not  been  or 
shall  not  be  completed  within  twelve  months  from  the  date  of 
the  application,  by  reason  of  default  on  the  part  of  the  appli- 
cant, the  Registrar  shall  give  notice  of  the  non-completion  to 
the  agent  (if  any)  employed  on  behalf  of  the  applicant,  and, 
if  at  the  expiration  of  fourteen  days  from  that  notice  the  regis- 
tration is  not  completed,  shall  give  the  like  notice  to  the  appli- 
cant (to  be  left  at  his  address  within  the  Colony,  if  he  be  out 
of  the  Colony),  and  if  at  the  expiration  of  the  latter  fourteen 
days,  or  such  further  time  as  the  Registrar  may  in  special  cases 
permit,  the  registration  is  not  completed,  the  application  shall 
be  deemed  to  be  abandoned. 

Particulars  of  trade  mark 

5.  For  the  purpose  of  this  Act  a  trade  mark  must  consist 
of  or  contain,  at  least,  one  of  the  following  essential  particulars : 

a)  A  name  of  an  individual  or  firm  printed,  impressed  or 
woven  in  some  particular  and  distinctive  manner ;  or 

b)  A  written  signature,  or  copy  of  a  written  signature,  of 
the  individual  or  firm  applying  for  registration  thereof  as  a 
trade  mark;  or 

c)  A  distinctive  device,  mark,  brand,  heading,  label,   or 
ticket;  or 

d)  An  invented  word  or  invented  words;  or 

e)  A  word  or  words  having  no  reference  to  the  character 
or  quality  of  the  goods,  and  not  being  a  geographical  name. 

(2)  There  may  be  added  to  any  one  or  more  of  the  essen- 
tial particulars  mentioned  in  this  section  any  letters,  words,  or 
figures,  or  combination  of  letters,  words  or  figures,  or  any  of 
them ;  but  the  applicant  for  registration  of  any  such  additional 
matter  must  state  in  his  application  the  essential  particulars  of 
the  trade  mark,  and  must  disclaim  in  his  application  any  right 
to  the  exclusive  use  of  the  added  matter,  and  a  copy  of  the 
statement  and  disclaimer  shall  be  entered  on  the  register. 

(3)  Provided  that  a  person  need  not,  under  this  section, 
disclaim  his  own  name  or  the  foreign  equivalent  thereof,  or  his 
place  of  business,  but  no  entry  of  any  such  name  shall  affect  the 
right  of  any  owner  of  the  same  name  to  use  that  name  or  the 
foreign  equivalent  thereof. 

Connection  of  trade  mark  with  goods 

6.  A  trade  mark  must  be  registered  for  particular  goods 
or  classes  of  goods. 


LEEWARD  ISLANDS  547 

Registration  of  a  series  of  marks 

7.  When  a  person  claiming  to  be  the  proprietor  of  several 
trade  marks,  which,  while  resembling  each  other  in  the  mate- 
rial particulars  thereof,  yet  differ  in  respect  of: 

a)  the  statement  of  the  goods  for  which  they  are  respec- 
tively used  or  proposed  to  be  used,  or 

b)  statements  of  numbers,  or 

c)  statements  of  price,  or 

d)  statements  of  quality,  or 

e)  statements  of  names  of  places, 

seeks  to  register  such  trade  marks,  they  may  be  registered  as 
a  series  in  one  registration.  A  series  of  trade  marks  shall  be 
assignable  and  transmissible  only  as  a  whole,  but  for  all  other 
purposes  each  of  the  trade  marks  composing  a  series  shall  be 
deemed  and  treated  as  registered  separately. 

Trade  marks  may  be  registered  in  any  colour  or  colours 

8.  A  trade  mark  may  be  registered  in  any  colour  or 
colours,  and  such  registration  shall  (subject  to  the  provisions 
of  this  Act)  confer  on  the  registered  owner  the  exclusive  right  to 
use  the  same  in  that  or  any  other  colour  or  colours. 

Advertisement  of  application 

9.  Every  application  for  registration  of  a  trade  mark 
under  this  Act  shall,  as  soon  as  may  be  after  its  receipt,  be 
advertised  by  the  Registrar,  unless  the  Registrar  refuse  to  en- 
tertain the  application. 

Opposition  to  Registration 

10.  (1)  Any  person  may  within  one  month,  or  such  fur- 
ther time,  not  exceeding  three  months,  as  the  Registrar  may 
allow,  of  the  advertisement  of  the  application  give  notice  in 
duplicate  at  the  Trade  Marks  Office  of  opposition  to  registration 
of  the  trade  mark,  and  the  Registrar  shall  send  one  copy  of 
such  notice  to  the  applicant. 

(2)  Within  one  month  after  receipt  of  such  notice,  or  such 
further  time  as  the  Registrar  may  allow,  the  applicant  may 
send  to  the  Registrar  a  counter  statement  in  duplicate  of  the 
grounds  on  which  he  relies  for  his  application,  and,  if  he  does 
not  do  so,  shall  be  deemed  to  have  abandoned  his  application. 

(3)  If  the  applicant  sends  such  counter  statement,  the  Reg- 
istrar shall  furnish  a  copy  thereof  to  the  person  who  gave  notice 
of  opposition,  and  shall,  after  hearing  the  applicant  and  the 
opponent,  if  so  required,  decide  whether  the  trade  mark  is  to  be 
registered,  but  his  decision  shall  be  subject  to  appeal  to  the 
Court,  and  the  said  Court  shall  have  jurisdiction  to  hear  and 
determine  the  appeal,  and  shall  hear  the  applicant  and  the 


548  LEEWARD  ISLANDS 

opponent  and  the  Kegistrar,  and  shall  make  an  order  determin- 
ing whether  and  subject  to  what  conditions  (if  any)  registration 
is  to  be  permitted. 

(4)  If  the  applicant  abandon  his  application  after  notice 
of  opposition  in  pursuance  of  this  section,  he  shall  be  liable  to 
pay  to  the  opponent  such  costs  in  respect  of  the  opposition  as 
the  Registrar  may  determine  to  be  reasonable. 

(5)  When  the  opponent  is  out  of  the  Colony,  he  shall  give 
the  Registrar  an  address  for  service  in  the  Colony. 

Assignment  and  transmission  of  trade  mark 

11.  A  trade  mark,  when  registered,  shall  be  assigned  and 
transmitted  only  in  connection  with  the  goodwill  of  the  business 
concerned  in  the  particular  goods  or  classes  of  goods  for  which 
it  has  been  registered,  and  shall  be  determinable  with  that 
goodwill. 

Conflicting  claims  to  registration 

12.  Where  each  of  several  persons  claims  be  registered 
as  proprietor  of  the  same  trade  mark,  the  Registrar  may  refuse 
to  register  any  of  them  until  their  rights  have  been  determined 
according  to  law,  and  the  Registrar  may  himself  submit,  or  re- 
quire the  claimants  to  submit,  their  rights  to  the  Court. 

Restrictions  on  registration 

13.  (1)  Except  where  the  Court  has  decided  that  two  or 
more  persons  are  entitled  to  be  registered  as  proprietors  of  the 
same  trade  mark,  the  Registrar  shall  not  register  in  respect  of 
the  same  goods,  or  description  of  goods,  a  trade  mark  identical 
with  one  already  on  the  register  with  respect  of  such  goods  or 
description  of  goods. 

(2)  Except  as  aforesaid  the  Registrar  shall  not  register, 
with  the  respect  to  the  same  goods  or  description  of  goods,  a 
trade  mark  having  such  resemblance  to  a  trade  mark  already  on 
the  register  with  respect  to  such  goods  or  description  of  goods, 
as  to  be  calculated  to  deceive. 

Further  restriction  on  registration 

14.  It  shall  not  be  lawful  to  register  as  part  of,  or  in  com- 
bination with,  a  trade  mark  any  words  the  use  of  which  would, 
by  reason  of  their  being  calculated  to  deceive  or  otherwise,  be 
deemed  disentitled  to  protection  in  a  Court  of  Justice;  or  any 
scandalous  design. 

Saving  for  power  to  provide  for  entry  on  register  of  common 
marks  as  additions  to  trade  marks 

15.  (1)  Nothing  in  this  Act  shall  be  construed  to  prevent 
the  Registrar  entering  on  the  register,  in  the  prescribed  manner, 
and  subject  to  the  prescribed  conditions,  as  an  addition  to  any 


LEEWARD  ISLANDS  549 

trade  mark,  any  distinctive  word  or  combination  of  words, 
though  the  same  is  common  to  the  trade  in  the  goods  with  re- 
spect to  which  the  application  is  made. 

(2)  The  applicant  for  registration  of  any  such  addition 
must,  however,  state  in  his  application  the  essential  particulars 
of  the  trade  mark,  and  must  disclaim  in  his  application  any 
right  to  the  exclusive  use  of  the  added  matter,  and  a  copy  of 
the  statement  and  disclaimer  shall  be  entered  on  the  register. 
Provided  that  a  person  need  not,  under  this  section,  dis- 
claim his  own  name  or  the  foreign  equivalent  thereof,  or  his 
place  of  business;  but  no  entry  of  any  such  name  shall  affect 
the  right  of  any  owner  of  the  same  name  to  use  that  name  or 
the  foreign  equivalent  thereof. 

EFFECT  OF  REGISTRATION 

Application  for  registration  equivalent  to  public  use 

16.  Application  for  registration  of  a  trade  mark  shall  be 
deemed  to  be  equivalent  to  public  use  of  the  trade  mark. 

Right  of  first  proprietor  to  exclusive  use  of  trade  mark 

17.  The  registration  of  a  person  as  proprietor  of  a  trade 
mark  shall  be  prima  facie  evidence  of  his  right  to  the  exclusive 
use  of  the  trade  mark,  and  shall,  after  the  expiration  of  five 
years  from  the  date  of  the  registration,  be  conclusive  evidence 
of  his  right  to  the  exclusive  use  of  the  trade  mark,  subject  to 
the  provisions  of  this  Act. 

Restrictions  on  actions  for  infringement  and  on  defense  to 
action  in  certain  cases 

18.  A  person  shall  not  be  entitled  to  institute  any  proceed- 
ing to  prevent  or  to  recover  damages  for  the  infringement  of  a 
trade  mark,  unless  in  the  case  of  a  trade  mark  capable  of  being 
registered  under  this  Act,  it  has  been  registered  in  pursuance  of 
this  Act. 

Costs  of  action  for  infringement  of  trade  mark 

19.  In  an  action  for  infringement  of  a  registered  trade 
mark,  the  Court  or  a  Judge  may  certify  that  the  right  to  the 
exclusive  use  of  the  trade  mark  came  in  question,  and  if  the 
Court  or  a  Judge  so  certifies,  then,  in  any  subsequent  action 
for  infringement,  the  plaintiff  in  that  action,  on  obtaining  a  final 
order  or  judgment  in  his  favour,  shall  have  his  full  costs, 
charges,  and  expenses  as  between  solicitor  and  client,  unless  the 
Court  or  Judge  trying  the  subsequent  action  certifies  that  he 
ought  not  to  have  the  same. 

REGISTER  OF  TRADE  MARKS 

20.  There  shall  be  kept  at  the  Trade  Marks  Office  a  book 
called  the  Register  of  Trade  Marks,  wherein  shall  be  entered 


550  LEEWARD  ISLANDS 

the  names  and  addresses  of  proprietors  of  registered  trade 
marks,  notifications  of  assignments  and  transmissions  of  trade 
marks,  and  such  other  matter  as  may  be  from  time  to  time 
prescribed. 
Removal  of  trade  mark  after  fourteen  years  unless  fee  paid 

21.  (1)  At  a  time  not  being  less  than  two  months,  nor 
more  than  three  months,  before  the  expiration  of  fourteen 
years  from  the  date  of  registration  of  a  trade  mark,  the  Regis- 
trar shall  send  notice  to  the  registered  proprietor  that  the  trade 
mark  will  be  removed  from  the  register  unless  the  proprietor 
pays  to  the  Registrar  before  the  expiration  of  such  fourteen 
years  (naming  the  date  at  which  the  same  will  expire)  the  pre- 
scribed fee ;  and  if  such  fee  be  not  previously  paid,  he  shall,  at 
the  expiration  of  one  month  from  the  date  of  the  giving  of  the 
first  notice,  send  a  second  notice  to  the  same  effect. 

(2)  If  such  fee  be  not  paid  before  the  expiration  of  such 
fourteen  years,  the  Registrar  may,  after  the  end  of  three  months 
from  the  expiration  of  such  fourteen  years,  remove  the  mark 
from  the  register,  and  so,  from  time  to  time,  at  the  expiration 
of  every  period  of  fourteen  years. 

(3)  If,  before  the  expiration  of  the  said  three  months,  the 
registered  proprietor  pays  the  said  fee  together  with  the  addi- 
tional prescribed  fee,  the  Registrar  may,  without  removing  such 
trade  mark  from  the  register,  accept  the  said  fee  as  if  it  had 
been  paid  before  the  expiration  of  the  said  fourteen  years. 

(4)  Where,  after  the  said  three  months,  a  trade  mark  has 
been  removed  from  the  register  for  non-payment  of  the  pre- 
scribed fee,  the  Registrar  may,  if  satisfied  that  it  is  just  to  do  so, 
restore  such  trade  mark  to  the  register  on  payment  of  the 
prescribed  additional  fee. 

(5)  Where  a  trade  mark  has  been  removed  from  the  regis- 
ter for  nonpayment  of  the  fee  or  otherwise,  such  trade  mark 
shall,  nevertheless,  for  the  purpose  of  any  application  for 
registration  during  one  year  next  after  the  date  of  such  re- 
moval, be  deemed  to  be  a  trade  mark  which  is  already  registered, 
unless  it  is  shown  to  the  satisfaction  of  the  Registrar  that  the 
non-payment  of  the  fee  arises  from  the  death  or  bankruptcy  of 
the  registered  proprietor,  or  from  his  having  ceased  to  carry  on 
business,  and  that  no  person  claiming  under  that  proprietor  or 
under  his  bankruptcy  is  using  the  trade  mark. 

FEES 
Fees  for  registration 

22.  There  shall  be  paid  in  respect  of  applications  for  regis- 
tration and  other  matters  under  this  Act  such  fees  as  may  be 


LEEWARD  ISLANDS  551 

from  time  to  time  prescribed  by  the  Governor  in  Council,  and 
such  fees  shall  be  levied  and  paid  rateably  to  the  Treasuries 
of  the  several  Presidencies  in  the  same  proportions  as  the 
several  Presidencies  contribute  to  Federal  Expenditures. 

GENERAL 

Trade  Maries  Office 

23.  (1)  The  Governor  in  Council  may  provide  for  the  pur- 
poses of  this  Act  an  office  with  all  requisite  buildings  and  con- 
veniences, which  shall  be  called,  and  in  this  Act  referred  to  as, 
the  Trade  Marks  Office. 

(2)  Until  a  new  Trade  Marks  Office  is  provided,  the  Office 
of  the  Chief  Registrar  of  the  Supreme  Court  shall  be  the  Trade 
Marks  Office  within  the  meaning  of  this  Act. 

(3)  The  Trade  Marks  Office  shall  be  under  the  immediate 
control  of  the  Chief  Registrar  of  the  Supreme  Court,  who  shall 
act  under  the  superintendence  and  direction  of  the  Governor  in 
Council. 

(4)  Any  act  or  thing  directed  to  be  done  by  or  to  the  Regis- 
trar may,  in  his  absence,  be  done  by  or  to  any  officer  for  the 
time  being  in  that  behalf  authorized  by  the  Governor  in  Council. 

Officers  and  clerks 

24.  (1)  The  Governor  in  Council,  may,  at  any  time  after 
the  passing  of  this  Act,  and  from  time  to  time,  appoint  such 
Officers  and  Clerks  with  such  designations  and  duties  as  the 
Governor  in  Council  shall  think  fit,  and  may  from  time  to  time 
remove  any  of  those  Officers  and  Clerks. 

(2)  The  salaries  of  those  Officers  and  Clerks  shall  be  ap- 
pointed by  the  Governor  in  Council,  with  the  concurrence  of 
the  General  Legislative  Council,  and  the  same,  and  other  ex- 
penses of  the  execution  of  this  Act,  shall  be  paid  out  of  the 
money  provided  by  the  General  Legislative  Council. 
Trusts  must  not  be  entered  in  registers 

25.  There  shall  not  be  entered  in  any  register  kept  under 
this  Act,  or  be  receivable  by  the  Registrar,  any  notice  of  any 
trust  expressed,  implied,  or  constructive. 

Refusal  to  register  trade  mark  in  certain  cases 

26.  The  Registrar  may  refuse  to  register  a  trade  mark 
of  which  the  use,  in  his  opinion,  would  be  contrary  to  law  or 
morality. 

Entry  of  assignment  and  transmission  in  Register 

27.  Where  a  person  becomes  entitled  by  assignment,  trans- 
mission, or  other  operation  of  law  to  a  registered  trade  mark, 
the  Registrar  shall  on  request,  and  on  proof  of  title  to  his  satis- 
faction, cause  the  name  of  such  person  to  be  entered  as  pro- 


552  LEEWARD  ISLANDS 

prietor  of  the  trade  mark  in  the  Register  of  Trade  Marks.  The 
person  for  the  time  being  entered  in  the  Register  of  Trade 
Marks  as  proprietor  of  a  trade  mark,  shall,  subject  to  the  pro- 
visions of  this  Act  and  to  any  rights  appearing  from  such 
register  to  be  vested  in  any  other  person,  have  power  absolutely 
to  assign,  grant  licenses  as  to,  or  otherwise  deal  with,  the  same, 
and  to  give  effectual  receipts  for  any  consideration  for  such 
assignment,  license,  or  dealing.  Provided  that  any  equities  in 
respect  of  such  trade  mark  may  be  enforced  in  like  manner  as 
in  respect  to  any  other  personal  property. 

Seal  of  Trade  Marks  Office 

28.  There  shall  be  a  seal  for  the  Trade  Marks  Office,  and 
impressions  thereof  shall  be  judicially  noticed  and  admitted  in 
evidence. 

Inspection  of,  and  extracts  from  registers 

29.  Every  register  kept  under  this  Act  shall,  at  all  con- 
venient times,  be  open  to  the  inspection  of  the  public,  subject 
to  the  provisions  of  this  Act  and  to  such  regulations  as  may  be 
prescribed;  and  certified  copies,  sealed  with  the  seal,  of  the 
Trade  Marks  Office,  of  any  entry  in  any  such  register  shall  be 
given  to  any  person  requiring  the  same,  on  payment  of  the 
prescribed  fee. 

Sealed  copies  to  be  received  in  evidence 

30.  Printed  or  written  copies  or  extracts,  purporting  to 
be  certified  by  the  Registrar  and  sealed  with  the  seal  of  the 
Trade  Marks  Office,  of  or  from  the  registers  and  other  books 
kept  there  shall  be  admitted  in  evidence  in  all  Courts  of  the 
Colony,  and  in  all  proceedings,  without  further  proof  or  pro- 
duction of  the  originals. 

Rectification  of  registers  by  court 

31.  (1)  The  Court  may,  on  the  application  of  any  person 
aggrieved  by  the  omission,  without  sufficient  cause,  of  the  name 
of  any  person,  or  of  any  other  particulars,  from  any  register 
kept  under  this  Act,  or  by  any  entry  made,  without  sufficient 
cause,  in  any  such  register,  make  such  order  for  making,  expung- 
ing, or  varying  the  entry,  as  the  Court  thinks  fit;  or  the  Court 
may  refuse  the  application ;  and,  in  either  case,  may  make  such 
order  with  respect  to  the  costs  of  the  proceedings  as  the  Court 
thinks  fit. 

(2)  The  Court  may,  in  any  proceeding  under  this  section, 
decide  any  question  that  it  may  be  necessary  or  expedient  to 
decide  for  the  rectification  of  a  register ;  and  may  direct  an  issue 
to  be  tried  for  the  decision  of  any  question  of  fact,  and  may 
award  damages  to  the  party  aggrieved. 


LEEWARD  ISLANDS  553 

(3)  Any  order  of  the  Court  rectifying  a  register  shall  direct 
that  due  notice  of  the  rectification  be  given  to  the  Registrar. 
Power  for  Registrar  to  correct  clerical  errors 

32.  The  Registrar  may,  on  request  in  writing  accompanied 
by  the  prescribed  fee, 

a)  correct  any  clerical  error  in,  or  in  connection  with,  an 
application  for  registration  of  a  trade  mark,  or 

b)  correct  any  clerical  error  in  the  name,  style  or  address 
of  the  registered  proprietor  of  the  trade  mark,  or 

c)  cancel  the  entry,  or  part  of  the  entry,  of  a  trade  mark 
on  the  register,  or 

d)  permit  an  applicant  for  registration  of  a  trade  mark  to 
amend  his  application  by  omitting  any  particular  goods,  or 
classes  of  goods,  in  connection  with  which  he  has  desired  the 
trade  mark  to  be  registered : 

Provided  that  the  applicant  accompanies  his  request  by  a 
statutory  declaration  made  by  himself,  stating  his  name,  ad- 
dress, and  calling,  and  that  he  is  the  person  whose  name  appears 
on  the  register  as  the  proprietor  of  the  said  trade  mark. 

Alteration  of  registered  mark 

33.  (1)  The  registered  proprietor  of  any  registered  trade 
mark  may  apply  to  the  Court  for  leave  to  add  to  or  alter  such 
mark  in  any  particular,  not  being  an  essential  particular  with- 
in the  meaning  of  this  Act ;  and  the  Court  may  refuse  or  grant 
leave  on  such  terms  as  it  may  think  fit. 

(2)  Notice  of  any  intended  application  to  the  Court  under 
this  section  shall  be  given  to  the  Registrar  by  the  applicant; 
and    the   Registrar    shall    be    entitled    to    be   heard    on    the 
application. 

(3)  If  the  Court  grants  leave,  the  Registrar  shall,  on  proof 
thereof  and  on  payment  of  the  prescribed  fee,  cause  the  register 
to  be  altered  in  conformity  with  the  order  of  leave. 

Falsification  of  entries  in  registers 

34.  If  any  person  makes,  or  causes  to  be  made,  a  false 
entry  in  any  register  kept  under  this  Act,  or  a  writing  falsely 
purporting  to  be  a  copy  of  an  entry  in  any  such  register,  or 
produces  or  tenders,  or  causes  to  be  produced  or  tendered  in 
evidence  any  such  writing,  knowing  the  entry  or  writing  to  be 
false,  he  shall  be  guilty  of  a  misdemeanour. 

Exercise  of  discretionary  power  by  Registrar 

35.  Where  any  discretionary  power  is  by  this  Act  given  to 
the  Registrar,  he  shall  not  exercise  that  power  adversely  to  the 
applicant  for  the  registration  of  the  trade  mark,  without  giving 


554  LEEWARD  ISLANDS 

the  applicant  an  opportunity  of  being  heard  personally  or  by  his 
agent. 

Power  of  Registrar  to  take  directions  of  Attorney  General 

36.  The  Registrar  may,  in  any  case  of  doubt  or  difficulty 
arising  in  the  administration  of  any  of  the  provisions  of  this 
Act,  apply  to  the  Attorney  General  for  directions  in  the  matter. 

Certificate  of  Registrar  to  be  evidence 

37.  A  certificate  purporting  to  be  under  the  hand  of  the 
Registrar,  as  to  any  entry,  matter,  or  thing  which  he  is  author- 
ized by  this  Act,  or  any  general  Rules  made  thereunder,  to  make 
or  do,  shall  be  priina  facie  evidence  of  the  entry  having  been 
made,  and  of  the  contents  thereof,  and  of  the  matter  or  thing 
having  been  done  or  left  undone. 

Application  and  notices  by  post 

38.  (1)  Any  application,  notice,  or  other  document  author- 
ized or  required  to  be  left,  made  or  given  at  the  Trade  Marks 
Office,  or  to  the  Registrar,  or  to  any  other  person  under  this 
Act,  may  be  sent  by  a  prepaid  letter  through  the  post;  and  if 
so  sent  shall  be  deemed  to  have  been  left,  made,  or  given  re- 
spectively at  the  time  when  the  letter  containing  the   same 
would  be  delivered  in  the  ordinary  course  of  post. 

(2)  In  proving  such  service  or  sending,  it  shall  be  sufficient 
to  prove  that  the  letter  was  properly  addressed  and  put  into 
the  post. 

Provision  as  to  days  for  leaving  documents  at  office 

39.  Whenever  the  last  day  fixed  by  this  Act,  or  by  any 
Rule  for  the  time  being  in  force,  for  leaving  any  document,  or 
paying  any  fee,  at  the  Trade  Marks  Office  shall  fall  on  Christ- 
mas Day,  Good  Friday,  or  on  a  Saturday  or  Sunday,  or  any 
day  observed  as  a  holiday  under  the  Bank  Holidays  Act,  1907,  or 
any  day  observed  as  a  day  of  Public  Fast  or  General  Thanks- 
giving, herein  referred  to  as  excluded  days,  it  shall  be  lawful 
to  leave  such  document,  or  to  pay  such  fee,  on  the  day  follow- 
ing such  excluded  day,  or  days,  if  two  or  more  of  them  occur 
consecutively. 

Declaration  by  infant,  lunatic,  etc. 

40.  If  any  person  is,  by  reason  of  infancy,  lunacy,  or  other 
inability,  incapable  of  making  any  declaration  or  of  doing  any- 
thing required  or  permitted  by  this  Act,  or  by  any  Rules  made 
under  the  authority  of  this  Act,  then  the  guardian  or  committee 
(if  any)  of  such  incapable  person,  or  if  there  be  none,  any 
person  appointed  by  any  Court  or  Judge  possessing  jurisdic- 
tion in  respect  to  the  property  of  incapable  persons,  upon  the 
petition  of  any  person  on  behalf  of  such  incapable  person,  or  of 


LEEWARD  ISLANDS  555 

any  other  person  interested  in  the  making  of  any  such  declara- 
tion or  doing  any  such  thing,  may  make  such  declaration  or  a 
declaration  as  nearly  corresponding  thereto  as  circumstances 
permit,  and  do  such  thing  in  the  name  and  on  behalf  of  such 
incapable  person,  and  all  acts  done  by  such  substitute  shall, 
for  the  purposes  of  this  Act,  be  as  effectual  as  if  done  by  the 
person  for  whom  he  is  substituted. 

Power  of  Governor  in  Council  to  make  general  rules  for  classify- 
ing goods  and  regulating  business  of  Trade  Marks  Office 

41.  (1)  The  Governor  in  Council  may,  from  time  to  time, 
make  such  general  Rules  and  do  such  things  as  he  thinks  expedi- 
ent, subject  to  the  provisions  of  this  Act, 

a)  for  regulating  the  practice  of  registration  under  this 
Act; 

b)  for  classifying  goods  for  the  purpose  of  trade  marks ; 

c)  for  making  or  requiring  duplicates  of  any  documents; 

d)  for  securing  and  regulating  the  publishing  and  selling 
of  copies,  at  such  prices  and  in  such  manner  as  the  Governor 
in  Council  may  think  fit,  of  any  documents  in  the  Trade  Marks 
Office; 

e)  for  securing  and  regulating  the  making,  printing,  pub- 
lishing, and  selling  of  indexes  to,  and  abridgements  of,  any 
documents  in  the  Trade  Marks  Office;  and  providing  for  the 
inspection  of  indexes  and  abridgements,  and  other  documents; 

f )  generally  for  regulating  the  business  of  the  Trade  Marks 
Office  and  all  things  by  this  Act  placed  under  the  direction  or 
control  of  the  Registrar,  or  of  the  Governor  in  Council. 

(2)  The  form  in  the  Schedule  may  be  altered  or  amended 
by  Rules  made  by  the  Governor  in  Council  aforesaid. 

(3)  General  Rules  may  be  made  under  this  section  at  any 
time  after  the  passing  of  this  Act,  but  not  so  as  to  take  effect 
before  the  commencement  of  this  Act;  and  shall  (subject  as  is 
hereinafter  mentioned)  be  of  the  same  effect  as  if  they  were 
contained  in  this  Act,  and  shall  be  judicially  noticed. 

(4)  Any  Rules  made  in  pursuance  of  this  Section  shall  be 
laid  before  the  General  Legislative  Council,  if  the  General  Leg- 
islative Council  be  in  session  at  the  time  of  the  making  thereof, 
or  if  not,  then  as  soon  as  practicable  after  the  beginning  of  the 
next  session  of  the  General  Legislative  Council ;  and  they  shall 
be  advertised  twice  in  the  Gazette. 

(5)  If  the  General  Legislative  Council,  within  the  next 
forty  days  after  any  such  general  Rules  shall  have  been  so  laid 
before  it,  resolve  that  such  rules  or  any  of  them  ought  to  be 
annulled,  the  same  shall,  after  the  date  of  such  resolution,  be 
of  no  effect,  without  prejudice  to  the  validity  of  anything  done 


556  LEEWARD  ISLANDS 

in  the  meantime  under  such  Rules  or  Rule,  or  to  the  making 
of  any  new  Rules  or  Rule. 

Protection  of  trade  marks,  etc.,  registered  in  the  United 
Kingdom,  or  in  any  British  colony,  or  foreign  state 

42.  It  shall  be  lawful  for  the  Governor  by  Order  in  Council, 
from  time  to  time,  to  make  provision  for  the  protection  of 
inventions,  designs,  and  trade  marks  patented  or  registered  in 
the  United  Kingdom  and  for  the  protection  of  inventions,  de- 
signs and  trade  marks  in  any  British  Colony  or  foreign  state. 

Provided,  always,  that  an  Order  made  under  this  section 
shall  not  come  into  force,  without  the  consent  of  the  General 
Legislative  Council  expressed  by  resolution,  until  the  termina- 
tion of  the  sitting  of  the  next  General  Legislative  Council  which 
shall  commence  after  the  said  Order. 

Provided,  also,  that  such  Order  shall  be  placed  as  soon  as 
practicable  before  the  Council  aforesaid,  and  if  the  said  Council 
resolve,  before  the  passing  of  any  such  resolution  as  aforesaid 
and  before  the  termination  of  such  next  sitting  of  the  said 
Council  as  aforesaid,  that  any  Order  made  under  this  section 
or  any  part  thereof  ought  not  to  come  into  force,  then  such 
Order  or  part  thereof  shall  be  of  no  force  or  effect. 

Authority  for  taking  declaration  under  this  Act 

43.  Any  person  authorized  by  any  law  in  force  in  this 
Colony  to  take  affidavits  may  take  a  declaration  authorized  or 
required  to  be  made  under  this  Act. 


LIBERIA 

LAW  OF  FEBRUARY  1,  1900 

AN  ACT   SUPPLEMENTABY  TO  AN  ACT  TO   PROMOTE  THE  PROGRESS 

OP  THE  ARTS  OF  MANUFACTURE,  AGRICULTURE  AND  COM- 
MERCE, APPROVED  DECEMBER  22,  1864.* 

SECTION  1.  That  from  and  after  the  passage  of  this  Act, 
any  person  whether  Liberian  citizen  or  foreigner  shall  have  the 
privilege  of  registering  a  " Trade  Mark"  or  "Trade  Marks" 
under  the  sanction  and  protection  covering  the  granting  of  Let- 
ters Patent  of  said  Act  of  1864,*  the  applicant  in  all  cases  fur- 
nishing the  Department  with  a  clear  concise  description  of  such 
trade  mark  together  with  an  accurate  drawing  of  the  design  to 
be  registered. 

SEC.  2.  It  is  further  enacted  that  the  fee  for  registering 
a  trade  mark  under  this  act  shall  be  ten  dollars. 

Any  law  to  the  contrary  notwithstanding. 


SECTION  1.  That  there  shall  be  established  an  office  to  be 
termed  the  Patent  Office,  which  shall  be  under  the  control  of 
the  Secretary  of  State,  whose  duty  it  shall  be  to  superintend, 
execute  and  perform  all  such  acts  and  things  touching  and  re- 
specting the  granting  and  issuing  of  Letters  Patent  for  new 
and  useful  discoveries,  inventions  and  improvements,  as  are 
herein  provided  for,  or  shall  hereafter  be  by  law  directed  to  be 
done  and  performed,  and  shall  have  charge  and  authority  of  all 
Books,  Records,  Papers,  and  all  other  things  belonging  to  said 
office. 

SEC.  2.  It  is  further  enacted,  That  all  Patents  issuing  from 
said  office  shall  be  issued  in  the  name  and  under  the  seal  of  the 
Republic  of  Liberia,  and  be  signed  by  the  President  of  the  Re- 
public, and  countersigned  by  the  Secretary  of  State,  and  shall 
be  recorded  together  with  Descriptions,  Specifications,  and 
Drawings  in  the  said  Office  in  Books  to  be  kept  for  that  purpose. 
.  ,.•'  Every  such  patent  shall  contain  a  short  title  of  the  Inven- 
tion or  Discovery,  correctly  indicating  its  nature  and  design, 
and  its  terms,  grant  to  the  Applicant  or  Applicants,  his  or  their 
Heirs,  Administrators,  Executors  or  Assigns,  for  a  term  not 
exceeding  Twenty  Years,  the  full  and  exclusive  right  and  lib- 

*As  a  matter  of  information,  the  Act  of  1864  follows. 


558  LIBERIA 

erty  of  making,  using  and  vending  to  others  to  be  used  the  said 
invention  or  discovery,  referring  to  the  Specifications  for  the 
particulars  thereof,  a  copy  of  which  Specifications  with  the  Illus- 
trative Drawings  shall  be  annexed  to  the  Patent  specifying  what 
the  Patentee  claims  as  his  Invention  or  Discovery. 

SEC.  3.  It  is  further  enacted,  That  any  Citizen  or  Citizens 
having  discovered  or  invented  any  new  and  useful  Art,  Machine, 
Manufacture,  Process,  Composition  of  Matter,  or  any  new  and 
useful  Improvement  in  any  Art,  Machine,  Manufacture,  Process, 
or  Composition  of  Matter,  or  having  invented  or  discovered  a 
new  and  useful  application  of  any  known  substance,  or  matter, 
or  Composition  of  Matter  or  any  new  and  useful  application  of 
any  known  article  of  Manufacture,  device,  or  apparatus,  to  any 
art  Manufacture,  Machine,  Process,  or  Composition  of  Matter; 
such  Invention,  or  Discovery,  or  such  application  not  being  in 
any  Book  or  other  Publication  in  this  Country,  before  his  or 
their  Discovery  thereof,  may  make  application  in  writing  to 
the  Secretary  of  State,  expressing  such  desire,  and  the  Secre- 
tary of  State  may  on  due  proceedings  had  grant  a  Patent  there- 
for. But  before  any  Inventor  shall  receive  a  Patent  for  any 
such  Invention,  Discovery,  or  New  Application,  he  shall  deliver 
a  written  Description  thereof,  and  of  the  manner  and  process 
of  making,  constructing,  using,  applying  and  compounding  the 
same,  in  such  full,  clear,  and  exact  terms  as  to  enable  any  person 
skilled  in  the  art  or  science  to  which  it  appertains,  or  with  which 
it  is  most  nearly  connected,  to  make,  construct,  apply,  compound 
and  use  the  same,  and  shall  particularly  specify  and  point  out 
the  part,  improvement,  or  combination  which  he  claims  as  his 
own  Invention  or  Discovery.  He  shall  furthermore  accompany 
the  whole  with  a  Drawing  or  Drawings,  and  Written  References, 
where  the  nature  of  the  case  admits  of  Drawings.  The  appli- 
cant shall  furthermore  make  Oath  or  Affirmation  that  he  does 
verily  believe  that  he  is  the  Original  and  First  Inventor  or  Dis- 
coverer of  the  Art,  Machine,  Composition,  Application,  or  Im- 
provement for  which  he  solicits  a  Patent,  and  that  the  same  was 
not  known  or  used  within  the  limits  of  the  Republic  of  Liberia, 
prior  to  his  said  invention,  and  that  he  is  a  citizen  of  this  Re- 
public; the  said  Oath  or  Affirmation  to  be  taken  before  any 
person  authorized  by  law  to  administer  oaths. 

SEC.  4.  It  is  further  enacted,  That  on  filing  such  applica- 
tion, description  and  specifications  and  the  payment  of  the  fees 
hereinafter  provided,  the  Secretary  of  State  shall  make  or 
cause  to  be  made  an  examination  of  the  alleged  new  invention 
or  discovery,  and  if  it  should  appear  to  the  Secretary  of  State 
that  the  same  had  not  been  invented  or  discovered,  or  known 


LIBERIA  559 

by  any  other  person  in  this  country,  and  had  not  been  described 
in  any  Book  or  other  Publication  in  this  country  prior  to  the 
discovery  thereof  by  the  applicant,  then  it  shall  be  the  duty  of 
the  Secretary  of  State  to  issue  a  Patent  therefor.  But  when- 
ever it  shall  appear  to  the  Secretary  of  State  that  the  applicant 
was  not  the  first  Inventor  or  Discoverer  thereof,  or  that  what 
is  claimed  as  new  had  been  known  to  others  in  this  country,  or 
had  been  described  in  some  publication  in  this  country  prior  to 
the  time  of  the  alleged  Invention  or  Discovery  of  the  Applicant, 
then  it  shall  be  the  duty  of  the  Secretary  of  State  to  refuse  the 
grant  of  Letters  Patent  to  the  Applicant  therefor. 

SEC.  5.  It  is  further  enacted,  That  if  any  Alien  or  Aliens 
shall  have  invented  or  discovered  any  new  Art,  Machine,  Manu- 
facture, Process,  or  Composition  of  Matter,  or  any  new  and 
useful  Improvement  of  any  Art,  Machine,  Manufacture,  Process, 
or  Composition  of  Matter,  or  has  invented  or  discovered  a  new 
and  useful  application  of  any  known  substance  or  Machine,  or 
Composition  of  Matter,  or  any  new  and  useful  application  of 
any  known  article  of  Manufacture,  Device,  or  Apparatus,  to 
any  Art,  Manufacture,  Machine,  Process,  or  Composition  of 
Matter,  such  Invention  or  Discovery,  or  such  application  not 
having  been  known  or  used  by  others  within  the  limits  of  this 
Republic,  or  if  any  Alien  or  Aliens  shall  be  the  legal  owner  or 
owners  of  such  Invention  or  Discovery,  or  application,  and  shall 
express  a  desire  to  introduce  the  same  and  put  it  into  active 
operation  in  this  country,  then  it  shall  be  the  duty  of  the  Secre- 
tary of  State  on  due  proceedings  held,  as  provided  for  in  third 
Section  of  this  Act,  to  issue  Letters  Patent  therefor.  But  before 
letters  patent  can  be  granted  to  such  Applicant,  he  shall  deliver, 
with  the  Description  of  the  Invention  or  Discovery  claimed,  a 
certificate  signed  and  sealed  by  the  Mayor  or  Governor  of  the 
City  or  State  in  which  he  resides,  or  by  a  duly  authorized  Notary 
Public,  which  certificate  shall  set  forth  that  the  applicant  is 
the  Original  and  First  Discoverer  of  the  thing  claimed,  or  that 
he  has  purchased  the  right,  title,  and  interest  in  this  country  to 
the  said  Invention  or  Discovery. 

SEC.  6.  It  is  further  enacted,  That  when  any  alien  or  aliens 
shall  have  obtained  Letters  Patent  for  any  invention  or  dis- 
covery, it  shall  be  his  or  their  duty  to  put  the  same  in  active 
operation  in  this  Republic  within  three  years  from  the  date  of 
the  said  Patent,  and  any  refusal  or  neglect  on  the  part  of  the 
Patentee  to  do  this,  shall  be  considered  as  an  abandonment  by 
him  of  his  Patent  to  the  public. 

SEC.  7.  It  is  further  enacted,  That  before  any  application 
for  a  Patent  shall  be  considered  by  the  Secretary  of  State,  the 


560  LIBERIA 

applicant  shall  pay  into  the  Treasury,  or  into  the  Office  of  the 
Secretary  of  State,  to  the  credit  of  the  Treasury,  if  he  be  a 
citizen  of  this  Republic,  the  sum  of  Twenty-Five  Dollars ;  if  he 
be  an  alien,  the  sum  of  Fifty  Dollars ;  and  the  moneys  received 
under  this  Act  shall  constitute  a  fund  for  the  payment  of  Sala- 
ries of  such  Assistants  as  the  Secretary  of  State  may  deem 
necessary  for  carrying  this  Act  into  effect. 

SEC.  8.  It  is  further  enacted,  That  every  patent  shall  be 
assignable  in  law,  either  as  to  the  whole  interest  or  any  indi- 
vidual part  thereof,  by  any  instrument  of  writing ;  which  assign- 
ment, and  also  every  grant  and  conveyance  of  the  exclusive 
right  under  any  patent  to  make  and  use,  and  to  grant  to  others 
to  make  and  use  the  thing  patented  within  and  throughout  the 
whole  or  any  specified  portion  of  the  Republic  of  Liberia,  shall 
be  recorded  in  the  Office  of  the  Secretary  of  State  within  one 
year  from  the  execution  thereof. 

SEO.  9.  It  is  further  enacted,  That  all  actions  for  damages 
for  making,  using,  or  selling  the  thing  whereof  the  exclusive 
right  is  secured  by  any  patent,  and  all  suits,  controversies,  and 
cases  arising  under  this  Act,  shall  be  cognizable,  as  well  as  in 
equity  as  at  law,  by  the  Supreme  Court  of  the  Republic  of 
Liberia. 

SEC.  10.  It  is  further  enacted,  That  it  shall  be  the  duty 
of  the  Secretary  of  State  to  make,  or  cause  to  be  made,  exact 
copies  of  all  patents  issued,  and  also  of  all  drawings  appertain- 
ing to  the  said  Patents,  which  copies  shall  be  properly  classified 
and  shall  be  retained  as  Permanent  Records  in  the  Office  of  the 
Secretary  of  State,  and  the  said  copies  shall  be  open  for  inspec- 
tion at  reasonable  hours  to  all  who  may  desire  to  peruse  the 
same.  And  it  shall  furthermore  be  the  duty  of  the  Secretary 
of  State  to  furnish  on  reasonable  terms  certified  copies  of  any 
Patents  or  Documents  relating  thereto. 

Approved  December  23,  1864. 


LITHUANIA 

In  the  Provisional  Constitution  of  Lithuania,  reported  in 
Vyriausybes  Ziniu  (Government  Gazette),  No.  37,  Sec.  3,  it  is 
provided  that: 

' '  The  laws  that  have  been  in  force  until  the  day  of  publica- 
tion of  this  Constitution,  and  if  they  do  not  conflict  with  the 
provisions  of  this  Constitution,  shall  remain  in  full  force  and 
effect.  Kovno,  June  10,  1920." 

For  the  provisions  of  the  Eussian  law — referred  to — see 
Esthonia — Law  of  April  15,  1921 — which  is  substantially  the 
same. 


LUXEMBURG 

LAW  OF  MARCH  28,  1883 

ARTICLE  1.  There  shall  be  considered  as  a  mark  of  manu- 
facture or  of  commerce  any  sign  serving  to  distinguish  the 
products  of  an  industry  or  the  objects  of  commerce. 

The  name  of  a  person  or  a  corporate  name  may  serve  as 
a  mark  in  the  distinctive  form  that  is  given  thereto  by  the  party 
interested. 

ART.  2.  No  person  may  pretend  to  the  exclusive  use  of  a 
mark  unless  he  has  deposited  the  design  thereof  in  duplicate 
and  the  electrotype  in  the  hands  of  the  official  designated  by 
the  government. 

ART.  3.  He  that  first  has  made  use  of  a  mark  may  alone 
effect  the  deposit  thereof. 

ART.  4.  The  act  of  deposit  shall  be  recorded  in  a  special 
Register  and  signed  by  the  depositor  or  by  his  attorney,  as  well 
as  by  the  official  charged  with  receiving  the  deposit. 

The  power  of  attorney  shall  remain  annexed  to  the  record. 
This  latter  shall  state  the  day  and  hour  of  the  deposit  and  it 
shall  indicate  the  kind  of  industry  or  commerce  for  which  the 
depositor  has  the  intention  of  availing  himself  of  the  mark. 

A  copy  of  the  act  of  deposit  shall  be  delivered  to  the 
depositor. 

These  acts  are  exempt  from  stamps  and  registration. 

The  description  and  the  design  of  the  mark  shall  be  pub- 
lished in  the  Memorial. 

ART.  5.  The  exclusive  use  of  the  mark  shall  be  limited  to 
the  class  of  objects  designated  in  the  act  of  deposit. 

ART.  6.  There  shall  be  paid  for  each  mark  deposited  a  fee 
of  ten  francs. 

The  deposit  shall  be  received  only  upon  the  production  of 
the  receipt  showing  the  payment  of  the  fee. 

ART.  7.    The  deposit  shall  have  effect  only  for  ten  years. 

The  right  to  the  exclusive  use  of  the  mark  may  always  be 
preserved  for  a  new  term  of  ten  years  by  means  of  a  new 
deposit. 

ART.  8.  Any  depositor  may  renounce  the  benefits  of  his 
deposit  by  a  declaration  made  according  to  the  form  prescribed 
by  Art.  4.  Mention  of  this  declaration  shall  be  made  on  the 
margin  of  the  act  of  deposit. 

ART.  9.    Foreigners  that  exploit  in  the  Grand  Duchy  indus- 


LUXEMBURG  563 

trial  or  commercial  establishments  shall  enjoy,  for  the  products 
of  these  establishments,  the  benefits  of  the  present  law  on  ful- 
filling the  formalities  that  it  prescribes. 

The  same  holds  for  foreigners  and  Luxemburgers  that  ex- 
ploit their  industry  or  commerce  without  the  Grand  Duchy,  if, 
in  the  countries  in  which  their  establishments  are  situated, 
international  conventions  have  established  reciprocity  for  Lux- 
emburg marks. 

These  conventions  shall  not  be  subject  to  the  approval  of 
the  Legislative  Power. 

The  deposit  of  marks  belonging  to  foreigners  or  to  Luxem- 
burgers that  have  no  commercial  or  industrial  establishments 
in  the  Grand  Duchy  shall  be  of  effect  only  so  far  and  as  long  as 
these  marks  shall  be  protected  in  the  country  of  origin. 

ART.  10.  A  mark  may  be  transferred  only  along  with  the 
establishment  the  objects  of  manufacture  or  commerce  of  which 
it  serves  to  distinguish. 

Every  transfer  of  mark  by  act  inter  vivos  shall  be  regis- 
tered at  a  fixed  fee  of  one  franc  seventy  centimes. 

The  transfer  shall  be  effective,  as  regards  third  parties, 
only  after  the  deposit  of  an  extract  of  the  act  according  to  the 
forms  prescribed  for  the  deposit  of  the  mark. 

ART.  11.  The  deposit  of  a  mark  made  in  contravention  of 
the  dispositions  that  precede  shall  be  declared  null  on  demand 
of  any  one  interested. 

The  judgment  that  pronounces  nullity  shall  be  mentioned 
on  the  margin  of  the  act  of  deposit  after  it  shall  have  acquired 
force  of  a  res  adjudicata. 

ART.  12.  Every  deposit  of  mark  made  in  execution  of 
existing  laws  shall  cease  to  have  effect  on  January  1,  1884,  un- 
less it  has  been  renewed  before  this  date  in  conformity  with 
Art.  4. 

The  new  deposit  shall  be  exempt  from  the  tax  imposed  by 
Art.  6. 

ART.  13.  The  government  may  authorize  the  deposit  of 
marks  and  the  payment  of  the  tax  in  the  Consulates  of  Luxem- 
burg established  abroad. 

PROSECUTIONS  AND  PENALTIES 

ART.  14.  They  shall  be  punished  by  imprisonment  of  from 
eight  days  to  six  months  and  by  a  fine  of  from  twenty-six  francs 
to  two  thousand  francs,  or  by  either  of  these  penalties: 

a)  That  have  counterfeited  a  mark  and  those  that  have 
fraudulently  made  use  of  a  counterfeit  mark; 

b)  That  have  fraudulently  affixed  or  have  made  appear  by 
addition,  deletion  or  by  any  alteration  whatever,  upon  the  prod- 


564  LUXEMBURG 

ucts  of  their  industry  or  the  objects  of  their  commerce,  a  mark 
belonging  to  another ; 

c)  That  have  knowingly  sold,  offered  for  sale,  or  put  in 
circulation,  products  bearing  a  mark  counterfeited  or  fraudu- 
lently affixed. 

ABT.  15.  Unless  by  express  stipulation,  the  dispositions 
of  the  first  book  of  the  Penal  Code  and  Art.  505  of  the  same 
Code  shall  be  applicable  to  the  infractions  foreseen  by  the 
present  law. 

ART.  16.  He  may  be  condemned  to  imprisonment  for  one 
year  and  to  a  fine  of  four  thousand  francs,  or  to  either  of  these 
penalties,  who  shall  have  committed  one  of  the  infractions  fore- 
seen by  Art.  14  within  the  five  years  that  shall  follow  a  prior 
condemnation  pronounced  through  the  application  of  the  same 
article. 

ART.  17.  There  may  be  confiscated,  in  whole  or  in  part, 
products  bearing  a  mark  counterfeited  or  fraudulently  affixed, 
as  well  as  the  instruments  and  the  utensils  having  specially 
served  in  committing  the  crime,  if  the  condemned  party  is  the 
proprietor. 

The  goods  confiscated  may  be  adjudged  to  the  complainant 
who  shall  have  brought  a  civil  action  on  account  of  or  in  settle- 
ment of  his  claim  for  damages. 

The  Court  may  order  in  every  case  the  destruction  of  coun- 
terfeit marks. 

ART.  18.  The  Court  may  order  that  the  judgment  be  posted 
in  places  that  it  shall  designate,  and  inserted  in  whole  or  in  part 
in  journals  that  it  shall  indicate,  all  at  the  expense  of  the 
defendant. 

ART.  19.  Criminal  action  for  the  application  of  the  penal- 
ties fixed  by  the  present  law  may  be  lodged  only  upon  complaint 
of  the  injured  party.  This  party  may  discontinue  the  action 
by  withdrawing  from  the  complaint,  subject  to  claim  of  the 
Treasury  against  him  for  collection  of  expenses  that  may  have 
been  incurred. 

ART.  20.  Actions  brought  civilly  shall  be  lodged  exclu- 
sively in  the  tribunals  of  the  Arrondissement  sitting  in  commer- 
cial cases,  whatever  be  the  quality  of  the  plaintiff  or  defendant. 

ART.  21.  There  are  abrogated  the  dispositions  at  present 
in  force  regarding  marks  of  manufacture  and,  in  particular, 
the  Order  of  23  Nivose,  year  IX,  the  Law  of  22  Germinal,  year 
XI,  the  Decrees  of  February  20  and  September  5, 1810,  the  Royal 
Orders  of  December  25,  1818,  and  June  1,  1820,  as  well  as  the 
provisions  of  Arts.  184,  213,  and  214,  of  the  Penal  Code,  insofar 


LUXEMBURG  565 

as  they  are  applicable  to  marks  of  manufacture  and  of  com- 
merce. 

ART.  22.  A  Royal  Grand  Ducal  Order  shall  regulate  the 
measures  necessary  for  the  execution  of  the  present  law,  which 
shall  become  effective  on  July  1,  1883. 


MALTA 

ORDINANCE  NO.  XI  OF  1899  AS  AMENDED  BY  ORDI- 
NANCE NO.  VII  OF  1907 

ARTICLE  1.  In  any  procedure,  act  or  decision  in  which  the 
law  is  to  be  cited,  the  citation  of  the  "law  for  the  protection  of 
industrial  property"*  shall  imply  the  citation  of  this  Ordinance. 

TITLE  III 

OF  TRADE  MARKS 
What  is  a  trade  mark 

72.  Marks  intended  to  distinguish  the  produce  of  any  in- 
dustry or  articles  of  trade  are  considered  to  be  trade  marks, 
provided  they  contain  at  least  one  of  the  following  particulars : 

1)  A  name  of  an  individual  or  a  firm  of  a  commercial  part- 
nership, printed,  impressed,  or  woven,  in  some  particular  and 
distinctive  manner; 

2)  A  written  signature  or  copy  of  a  written  signature  of 
the  individual  applying  for  registration  thereof  as  a  trade  mark ; 

3)  A  distinctive  device,  mark,  brand,  heading,  label,  ticket, 
or  fancy  word  or  words  not  in  common  use. 

73.  The  marks  and  words  referred  to  in  the  preceding 
article  must  be  different  from  those  already  legally  used  by 
other  persons. 

Any  words  or  figures,  or  a  combination  of  words  and  figures 
may,  however,  in  a  trade  mark,  be  added  to  one  or  more  of  the 
particulars  indicated  in  the  first  paragraph  of  this  article. 
Exclusive  use  of  trade  mark 

74.  Any  person  may  have  the  exclusive  use  of  a  trade 
mark  provided  he  shall  comply  with  the  provisions  of  the  fol- 
lowing articles  of  this  title. 

Application  for  such  exclusive  use 

75.  Whoever  is  willing  to  secure  for  himself  the  exclusive 
use  of  any  trade  mark  shall  present  to  the  Comptroller  an  ap- 
plication to  be  made  in  the  form  annexed  hereto,  and  to  be 
accompanied  by 

1)  two  representations  of  the  trade  mark; 

2)  a  declaration,  in  duplicate,  stating  the  kind  of  articles 
to  which  it  is  intended  to  affix  the  mark,  and  stating  whether 

*Matter  not  relating  to  trade  marks  is  omitted. 


MALTA  567 

the  mark  is  to  be  affixed  to  articles  produced  by  the  declarant, 
or  to  goods  of  his  trade ; 

3)  a  description,  in  duplicate,  of  the  mark; 

4)  a  receipt  or  a  declaration  from  the  Receiver  General, 
showing  the  payment  of  the  fee  established  in  schedule  B,  an- 
nexed hereto,  of  the  fee  on  registration  of  trade  marks. 

Representation  of  trade  mark 

76.  The  representations  of  a  trade  mark  shall  be  made  on 
metallic  plates,  pieces  of  solid  board,  or  parchment  and  similar 
substances  which,  in  the  opinion  of  the  Comptroller,  are  the 
least  liable  to  obliteration. 

77.  On  the  representations  of  trade  marks  the  Comptroller 
shall  write  a  progressive  number  and  an  indication  of  the  date 
of  the  deposit;  further,  they  shall  be  signed  by  the  depositor 
and  by  the  officer  who  received  them. 

Whenever  this  be  impracticable,  the  said  indications  shall 
be  made  on  small  pieces  of  board  to  be  joined  to  the  repre- 
sentations. 

Documents  filed  to  be  signed  by  Comptroller 

78.  All  such  documents  as  will  be  presented  for  the  pur- 
pose of  taking  a  trade  mark  shall  be  signed  by  the  Comptroller. 

Notice  of  application  to  be  published 

79.  A  notice  of  application  for  registration  of  a  trade 
mark  shall,  as  soon  as  possible,  be  given  by  the  Comptroller  in 
the  Government  Gazette  and  in  two  other  periodical  newspapers. 

Opposition  to  application 

80.  Any  person  may,  within  two  months  from  the  publica- 
tions of  the  notice  referred  to  in  the  preceding  article,  present 
to  the  Comptroller,  in  duplicate,  an  act  of  opposition  to  the 
said  application,  and  one  copy  of  the  act  of  opposition  shall  be 
sent  to  the  applicant  with  an  intimation  that  he  may  send,  in 
duplicate,  a  statement  of  the  grounds  against  the  opposition. 

If  the  applicant  does  not  send  such  statement,  his  applica- 
tion shall  be  considered  as  abandoned;  but,  if  he  sends  that 
statement,  it  shall  be  communicated  to  the  person  who  made  the 
opposition. 

Such  opposition  shall  be  considered  as  withdrawn,  if  the 
person  who  made  it  shall  not,  by  citation,  demand  in  the  com- 
petent Civil  Court  that  registration  be  not  granted,  and  shall 
not,  on  filing  the  citation,  give  sufficient  security  for  the  costs 
of  the  suit. 

Term  of  registration 

81.  The  application  for  registration  of  a  trade  mark  shall 
also  be  deemed  to  be  abandoned  if,  by  reason  of  default  on  the 


568  MALTA 

part  of  the  applicant,  registration  could  not  be  completed  within 
one  year  from  the  date  of  the  application. 

Definite  approval  of  application 

82.  When  the  formalities  required  by  the  preceding  pro- 
visions are  completed,  the  Comptroller  shall,  in  default  of  the 
opposition  referred  to  in  Art.  80,  or,  if  such  opposition  has 
been  absolutely  rejected,  definitively  approve  the  application 
for  the  grant  of  a  certificate  of  registration  of  the  trade  mark. 

Registration 

83.  A  trade  mark  shall  be  registered  as  applicable  to  par- 
ticular goods  or  to  particular  classes  of  goods. 

When  a  person  claiming  to  be  the  proprietor  of  several 
trade  marks  which,  while  resembling  each  other  in  the  principal 
particulars  thereof,  yet  differ  in  respect  of  the  statement,  first, 
of  the  goods  for  which  they  are  used  or  proposed  to  be  used; 
second,  of  numbers ;  third,  of  price ;  fourth,  of  quality ;  fifth,  of 
names  of  places,  seeks  to  register  such  marks,  they  may  be 
registered  as  a  series  in  one  registration. 

Each  of  the  marks  so  registered  shall,  however,  be  deemed 
as  registered  separately. 

84.  A  trade  mark  may  be  registered  in  any  colour,  and 
the  proprietor  shall  be  entitled  to  use  it  in  the  colour  in  which 
it  was  registered  or  in  any  other  colour. 

Power  of  Comptroller 

85.  The  Comptroller  may,  on  just  grounds,  refuse  to  regis- 
ter a  trade  mark. 

In  such  case  he  must  communicate  his  refusal  in  writing  to 
the  applicant,  who  may  avail  himself  of  the  remedy  referred 
to  in  Art.  17. 

86.  If  the  application  be  allowed  by  the  Comptroller,  the 
trade  mark  shall  be  entered  in  the  Register  of  Trade  Marks  as 
provided  in  Title  V. 

Exclusive  use  of  a  mark 

87.  An  applicant  for  the  registration  of  a  trade  mark 
shall  be  entitled  to  the  exclusive  use  of  the  mark  from  the  date 
of  the  application  for  registration;  but  he  shall  not  be  entitled 
to  institute  any  proceeding  to  recover  damages  for  an  infringe- 
ment of  his  patent  which  occurred  before  the  publication  of  the 
certificate  of  registration  in  the  Government  Gazette. 

Registration  does  not  guarantee 

88.  The  registration  does  not  guarantee  the  importance 
or  authority  of  a  trade  mark,  or  the  excellence  or  origin  of  the 
produce,  or  the  existence  of  the  other  conditions  required  for 
the  validity  of  a  patent. 


MALTA  569 

Right  of  ownership  of  marks  registered  abroad 

89.  The  provisions  contained  in  Art.  63*  for  the  protec- 
tion of  designs  or  models  of  manufacture  registered  abroad 
shall  apply  to  trade  marks. 

Successor  to  holder  of  mark 

90.  A  representative  or  successor,  industrial  or  commer- 
cial, intending  to  retain  the  mark  of  his  author,  shall  comply 
with  the  provisions  contained  in  Chapter  IV  of  Title  I  in  so  far 
as  they  apply  to  the  transfer  of  the  certificate  of  registration 
of  trade  marks. 

Transfer  of  patent  to  extend  to  right  to  trade  in  the  goods 

91.  The  transfer  of  a  patent  for  a  trade  mark  shall  not 
be  valid  unless  it  extends  also  to  the  right  to  trade  in  the  goods 
or  in  the  class  of  goods  in  reference  to  which  the  mark  was 
registered. 

Marks  registered  as  a  series 

92.  Notwithstanding  the  provision  of  the  last  sub-section 
of  Art.  83,  such  marks  as  are  registered  as  a  series,  as  provided 
in  the  first  paragraph  of  that  article,  cannot  be  transferred 
separately,  but  they  may  be  transferred  as  a  whole. 

*"63.  Any  person  who  has  applied  for  protection  of  a  design  or  model  of  manu- 
facture in  the  United  Kingdom,  or  a  British  possession,  or  in  a  Foreign  State,  with 
the  Government  of  which  an  arrangement  has  been  made  for  mutal  protection 
of  designs  or  models  of  manufacture,  shall  be  entitled  to  registration  of  his 
design  under  this  Ordinance  in  priority  to  other  applicants;  and  such  registra- 
tion shall  have  the  same  date  as  the  date  of  the  application  made  in  the  United 
Kingdom,  or  in  the  British  possession  or  Foreign  State,  as  the  case  may  be. 

"Provided  that  such  application  is  made  within  four  months  from  his  ap- 
plying for  protection  in  the  United  Kingdom,  or  in  the  British  possession,  or 
Foreign  State  with  which  the  arrangement  is  in  force,  as  the  case  may  be. 

"Provided  also  that  nothing  in  this  article  contained  shall  entitle  the  pro- 
prietor of  the  design  or  model  of  manufacture  to  recover  damages  for  infringe- 
ments happening  prior  to  the  date  of  the  actual  registration  ,of  his  design  or 
model  in  these  Islands. 

"The  exhibition  or  use  in  these  Islands  during  the  period  aforesaid,  of  the 
design  or  model  of  manufacture,  or  the  publication  therein  during  such  period 
of  a  description  or  representation  of  the  design  or  model  shall  not  invalidate 
the  registration  of  such  design  or  model  of  manufacture. 

"The  application  for  the  registration  of  a  design  or  model  of  manufacture 
under  this  article,  must  be  made  in  the  same  manner  as  an  ordinary  application 
under  this  Ordinance. 

"The  Foreign  States  to  which  the  foregoing  provisions  of  this  article  apply 
are  the  States  referred  to  in  article  6.  (See  following:) 

"6.  With  respect  to  Foreign  States,  the  provisions  .  .  .  shall  apply 
only  in  the  case  of  those  Foreign  States  with  respect  to  which  Her  Majesty 
shall,  from  time  to  time,  by  Order  in  Council,  declare  the  provisions  of  Section 
103  of  the  Imperial  Act  46  and  47  Victoria,  Chapter  57,  to  be  applicable,  and  so 
long  only,  in  the  case  of  each  State,  as  the  Order  in  Council  shall  continue  in 
force  with  respect  to  that  State." 

NOTE:  Sec.  103,  referred  to,  is  substantially  the  same  as  Great  Britain:  Patents 
and  Designs  Act,  1907,  Sec.  91,  which  see. 


570  MALTA 

Loss  of  right  to  make  use  of  a  mark 

93.  The  proprietor  of  a  registered  trade  mark  shall  lose 
his  right  to  use  it  exclusively,  if,  at  the  expiration  of  fourteen 
years  from  the  date  of  the  registration  of  the  mark,  he  fails  to 
pay  to  the  Comptroller  within  one  month  the  fee  indicated  in  the 
schedule  B,  provided  the  Comptroller  shall  have  sent  to  the 
proprietor  of  the  mark  two  written  applications  for  the  payment 
of  the  said  fee,  with  a  notice  that,  in  default  of  payment,  the 
patent  will  be  cancelled.    Of  the  said  applications,  one  must  be 
made  three  months,  and  the  other  two  months,  before  the  expira- 
tion of  the  said  term  of  fourteen  years. 

Fresh  registration  of  cancelled  mark 

94.  The  Comptroller  may,  on  just  grounds  being  shown, 
register  afresh  the  trade  mark  which  was  cancelled,  if  the  ap- 
plicant pays  the  additional  fees  established  in  the  schedule. 

Cancelling  of  mark  for  non-payment  of  fees 

95.  A  trade  mark  which  has  been  cancelled  for  non-pay- 
ment of  the  fee  indicated  in  Art.  93  shall,  for  the  purpose  of 
any  fresh  application  for  registration  thereof,  be  deemed  to 
be  a  trade  mark  still  registered  for  a  term  of  five  years. 

TITLE  IV 

OF  THE  INFRINGEMENT  OF  PATENTS,  OF  COPYRIGHTS  IN  DESIGNS 

AND  MODELS  OF  MANUFACTURE,  OF  TRADE  MARKS  AND 

OF  ACTIONS  ARISING  THEREFROM 


Effects  of  infringement  of  mark 

98.  Whoever  shall  commit  any  act  in  violation  of  the  rights 
of  any  person  in  whose  favor  a  trade  mark  has  been  registered, 
for  which,  under  the  provisions  of  Chapter  II  of  this  title,  he 
is  liable  to  penal  action,  may  be  condemned  by  the  competent 
Civil  Court  in  the  manner  mentioned  in  Art.  96,  at  the  instance 
of  the  proprietor  of  the  trade  mark. 

Forfeiture 

99.  The  Court,  in  each  of  the  cases  referred  to  in  the 
three  preceding  articles,  may,  on  an  application  from  the  plain- 
tiff, also  order  that  the  machinery  and  other  industrial  means 
used  in  contraventions  of  the  patent  and  of  the  rights  of  the 
proprietor  of  the  designs  and  models  of  manufacture,  or  of  the 
trade  marks,  the  forged  articles,  and  the  instruments  destined 
for  their  production,  be  forfeited,  wholly  or  partially,  and  de- 


MALTA  571 

livered  over  to  the  holder  of  the  patent,  without  prejudice  to 
the  other  compensation  referred  to  in  the  preceding  articles. 

100.  If  the  holder  of  the  articles  mentioned  in  the  preced- 
ing articles  acted  without  malice  or  fraud,  he  shall  be  liable  only 
to  the  said  forfeiture  for  the  benefit  of  the  injured  person. 

Civil  action — how  instituted 

101.  Civil  action  is  instituted  by  citation. 

Security 

102.  If,  for  the  purpose  of  securing  the  claim  for  the  for- 
feiture referred  to  in  Art.  99,  application  is  made  for  the  issue 
of  a  warrant  of  description,  or  of  sequestration,  or  of  seizure, 
or  of  inhibition,  the  Court  may,  before  issuing  the  said  warrant, 
require  the  applicant  to  give  security. 

Prescription 

103.  Civil  actions  arising  from  this  Ordinance  are  barred 
by  the  lapse  of  five  years  in  all  cases  where  in  this  same  Ordi- 
nance the  term  within  which  they  are  to  be  instituted  is  not  fixed. 

CHAPTER  II 

OP  PENAL  ACTION 
Punishment 

104.  Whoever  shall  put  into  circulation,  or  sell  any  articles, 
falsely  representing  that  they  are  patented,  or  that  the  design 
or  model  of  manufacture,  or  the  trade  mark,  applied  to  them, 
has  been  registered  with  reference  to  them,  shall  be  liable  to 
the  punishment  of  a  fine  (ammenda). 

A  person  shall  be  deemed  to  have  committed  the  said  con- 
travention if  he  sells  an  article  on  which  is  stamped,  engraved, 
impressed,  or  otherwise  applied,  the  words  "patented,"  "regis- 
tered," or  any  similar  word  intended  to  express  that  a  patent 
has  been  obtained  for  the  article,  or  that  the  design  or  model 
of  manufacture,  or  a  trade  mark  has  been  registered. 

Use  of  Royal  Arms 

105.  Whoever  shall,  without  the  authority  of  Her  Majesty, 
or  any  of  the  Royal  Family,  or  of  any  Government  Department, 
assume  or  use,  in  connection  with  any  trade,  business,  calling, 
or  profession,  the  Royal  Arms,  or  arms  so  nearly  resembling 
the  same  as  to  be  calculated  to  deceive  to  lead  other  persons 
to  believe  that  he  is  carrying  on  his  trade,  business,  calling,  or 
profession  under  the  said  authority,  shall  be  condemned  by  the 
Court  of  Judicial  Police  to  the  payment  of  a  fine  (multa). 

Article  281  of  Criminal  Laivs  amended 

106.  The  provision  of  Art.  281  of  the  Criminal  Laws  is 
cancelled  and  the  following  provisions  are  substituted  therefor : 


572  MALTA 

"281.  The  punishment  of  imprisonment  or  hard  labour 
from  four  months  to  one  year  shall  be  applicable  to  whoever : 

1)  Shall  forge  or  alter,  without  the  consent  of  the  proprie- 
tor, the  names,  marks  or  distinguishing  signs  of  intellectual 
productions,  or  of  the  product,  of  any  industry,  or  knowingly 
make  use  of  such  forged  or  altered  names,  marks  or  signs,  with- 
out the  consent  of  the  owner,  although  they  be  forged  or  altered 
by  others; 

2)  Shall  forge  or  alter,  without  the  consent  of  the  pro- 
prietor, any  designs  or  models  of  manufacture,  or  knowingly 
make  use  of  such  forged  or  altered  designs  and  models  of  manu- 
facture, although  they  be  forged  or  altered  by  others ; 

4)  Shall,  by  trading  in  any  goods  in  reference  to  which  a 
trade  mark  has  been  registered,  suppress  that  mark  without 
the  consent  of  the  proprietor  thereof; 

5)  Shall  apply  to  any  goods  a  false  trade  description,  that 
is  to  say,  shall  apply  thereto,  forged  or  altered,  a  figure,  word, 
or  mark  which  according  to  commercial  usage  indicates 

a)  The  number,  quantity,  measure,  gauge,  or  weight  of  the 
goods ; 

b)  The  place  or  country  in  which  the  goods  were  made  or 
produced ; 

c)  The  mode  of  manufacturing  or  producing  the  goods ; 

d)  The  fact  that  the  goods  are  the  subject  of  an  existing 
patent,  privilege,  or  industrial  copyright; 

For  the  purposes  of  this  sub-section,  any  figure,  word,  or 
mark  which,  according  to  the  custom  of  the  trade,  indicates  any 
of  the  above  matters,  shall  be  deemed  to  be  a  trade  descrip- 
tion thereof. 

6)  Shall  knowingly  put  into  circulation,  sell,  or  have  in  his 
possession  for  sale,  or  introduce  from  abroad  for  any  purpose 
of  trade,  any  goods  having  a  fraudulent  imitation  of  a  mark, 
sign,  or  emblem ; 

7)  Shall  knowingly  make,  have  in  his  possession,  or  trans- 
fer to  any  person,  any  die,  block,  machine,  or  other  instrument, 
for  the  purpose  of  forging,  or  of  being  used  for  forging,  a  trade 
mark. 

"28lA.  In  each  of  the  cases  referred  to  in  the  first  four 
sub-sections  of  the  preceding  article,  it  will  be  presumed  that 
the  defendant  acted  wilfully,  unless  he  proves  that  he  acted 
without  criminal  intent. 

"281B.  In  the  last  case  referred  to  in  §1  and  §2  of  Art. 
281,  and  in  the  cases  foreseen  in  paragraphs  2  and  4  of  that 


MALTA  573 

article,  the  burden  of  proving  the  assent  of  the  proprietor  shall 
be  on  the  defendant. 

"281c.  In  the  case  contemplated  in  the  fifth  sub-section 
of  Art.  281,  a  trade  description  may  be  false  in  the  meaning 
therein  stated,  notwithstanding  that  the  trade  description  is  a 
trade  mark  or  part  thereof. 

"281D.  In  the  case  contemplated  in  the  sixth  sub-section 
of  Art.  281  it  will  be  presumed  that  the  defendant  acted  mali- 
ciously, unless  he  proves 

1)  That,  having  taken  the  necessary  precautions  against 
contravening  the  provision  of  that  sub-section,  had,  at  the  time 
of  the  commission  of  the  offence  with  which  he  is  charged,  no 
reason  to  suspect  the  genuineness  of  the  mark  or  sign; 

2)  That,  on  being  required  to  do  so  by  any  member  of  the 
Police,  he  gave  all  the  information  in  his  power  with  respect  to 
the  persons  from  whom  he  had  obtained  the  things  referred  to ; 

3)  That  he  acted  innocently. 

*  *  28lE.  In  the  case  contemplated  in  the  seventh  sub-section 
of  the  said  Art.  281,  no  punishment  shall  be  applied  if  the  de- 
fendant proves 

1)  That  his  ordinary  business  is  to  make,  on  behalf  of 
other  persons,  dies,  blocks,  machines,  or  other  instruments  for 
making,  or  being  used  in  making,  trade  marks,  or  for  applying 
marks,  signs  or  emblems  to  goods ; 

2)  That  in  the  case  which  is  the  subject  of  the  charge,  he 
was  so  employed  by  some  person  resident  in  Malta,  and  he 
was  not  to  share  in  any  manner  in  the  profit  to  be  derived  from 
the  sale  of  the  goods  to  which  such  marks,  signs  or  emblems 
might  be  applied. 

"281F.  In  cases  where,  under  the  preceding  articles,  a 
person  has  applied  a  trade  mark  or  sign  or  trade  description 
to  goods,  it  will  be  held  that  the  defendant  has  so  applied  such 
mark,  sign  or  description,  not  only  if  he  actually  applied  it  to 
the  goods  themselves,  but  also  if,  first,  he  has  applied  it  to  any 
covering,  label,  reel,  or  other  thing  in  or  with  which  such  goods 
are  sold,  exposed  for  sale,  or  held  in  possession  for  the  purpose 
of  sale,  trade,  or  manufacture;  second,  he  has  placed,  enclosed, 
or  annexed  any  goods  which  are  sold,  exposed  for  sale,  or  held 
in  possession  for  the  purpose  of  sale,  in,  with,  or  to  any  cover- 
ing, label,  reel  or  other  thing  for  which  a  trade  mark  has  been 
registered  or  to  which  a  trade  description  is  applicable;  third, 
or  has  used  a  trade  mark  in  any  manner  calculated  to  lead  to 
the  belief  that  the  goods  to  which  they  have  been  applied  are 
those  which  are  really  so  designated  by  the  trade  mark,  sign, 


574  MALTA 

or  description  above  mentioned. 

"281o.  The  word  " covering"  as  used  in  this  Ordinance 
includes  any  stopper,  cork,  bottle,  vessel,  box,  cover,  capsule, 
case,  or  wrapper;  and  the  word  " label"  includes  any  band  or 
ticket  indicative  of  the  thing  to  which  it  is  affixed. 

"281n.  For  the  purposes  of  the  fifth  sub-section  of  Art. 
281,  where  a  watch  case  has  thereon  any  words  or  marks  indi- 
cating, or  generally  considered  as  indicating,  the  country  in 
which  the  watch  case  was  made,  and  the  rest  of  the  watch  bears 
no  indication  of  the  country  where  it  was  made,  the  existence 
of  the  said  words  or  marks  in  the  watch  case  shall  be  deemed 
to  be  a  presumption  juris  that  they  indicate  the  country  where 
the  watch  was  made." 

Addition  by  Art.  5  of  said  law 

107.  The  following  paragraph  is  inserted  after  sub-section 
4  of  the  first  paragraph  of  Art.  5  of  the  Criminal  Laws  and 
before  the  last  sub-section  of  that  article,  "(5)  against  any 
person  who,  being  in  these  islands,  shall  become  principal  or 
accomplice  in  any  of  the  offences  referred  to  in  Art.  281,  al- 
though it  shall  have  been  committed  out  of  these  islands." 

Admission  by  accused  and  by  his  wife  or  her  husband 
as  witnesses 

108.  The  accused,  and  his  wife  or  her  husband,  as  the  case 
may  be,  may,  at  the  request  of  the  accused,  be  called  as  wit- 
nesses in  the  trial,  in  which  case  they  shall  be  sworn  and  exam- 
ined in  like  manner  as  any  other  witness,  and  all  provisions  of 
the  law  relating  to  witnesses  shall  generally  apply  to  them. 

Powers  of  Magistrates  of  Judicial  Police 

109.  Pending  any  proceeding  instituted  by  citation  or  by 
the  arrest  of  the  accused,  for  any  one  of  the  offences  referred 
to  in  this  title,  any  Magistrate  of  Judicial  Police,  if  he  is  satis- 
fied by  information  on  oath  that  there  is  reasonable  cause  to 
suspect  that  any  goods  or  things  by  means  of  or  in  relation  to 
which  the  offence  has  been  committed  are  in  any  house  or 
premises  of  the  defendant,  or  are  in  his  possession  or  under 
his  control  in  any  other  place,  may,  by  a  warrant  under  his 
hand,  direct  any  officer  of  the  Executive  Police  to  be  named  in 
the  warrant,  to  enter  any  house,  premises  or  place  also  to  be 
named  therein,  to  search  there  for,  seize,  and  remove  such  goods 
or  things. 

110.  If  the  owner  of  any  goods  or  things  which,  if  he  had 
been  convicted  of  any  one  of  the  offences  referred  to  in  this 
title,  would  be  liable  to  forfeiture,  is  unknown  or  cannot  be 
found,  any  Magistrate  of  Judicial  Police  may  in  the  like  manner 


MALTA  575 

issue  the  said  warrant,  under  the  circumstances  required  in  the 
preceding  article. 

Forfeiture  of  things  seized 

111.  The  goods  and  things  so  seized  shall  be  produced 
before  the  Court  of  Judicial  Police  sitting  as  a  Court  of  Criminal 
Judicature,  which  will  determine  whether  the  same  are  liable  to 
forfeiture  under  this  Ordinance. 

112.  In  the  case  referred  to  in  Art.  110,  the  Court  shall 
issue  a  ban,  which  shall  twice,  with  an  interval  of  at  least  eight 
days,  be  published  in  the  Government  Gazette,  and  posted  up 
at  the  entrance  of  the  building  wherein  the  Court  sits,  and  in 
such  other  place  as  the  Court  may  deem  fit,  containing  an  inti- 
mation to  the  owner  of  the  goods  or  things  seized  and  to  all 
other  persons  interested  therein,  that,  unless  at  the  time  and 
place  named  in  the  ban  they  shall  attend  before  the  Court  and 
show  cause  to  the  contrary,  the  said  goods  or  things  shall  be 
forfeited. 

If  the  owner  or  any  person  on  his  behalf,  or  other  person 
interested  in  the  said  goods  or  things,  fails  to  attend  on  the 
day  and  at  the  hour  referred  to  in  the  ban  for  the  purpose  of 
showing  cause  as  above  stated,  it  shall  be  lawful  for  the  Court 
to  direct  that  the  said  goods  or  things  be  forfeited. 

Powers  of  the  Court  of  Judicial  Police 

113.  The  Court  may  direct  that  the  goods  or  things  be 
destroyed  or  sold,  after  the  trade  marks  or  other  marks  have 
been  obliterated  from  them,  and  may  also  direct  that,  out  of 
the  proceeds  of  the  sale  of  the  things  forfeited  and  up  to  the 
amount  thereof,  any  persons  who,  being  in  good  faith,  were 
injured  by  the  forfeiture,  be  awarded  compensation  for  any 
loss  caused  to  them. 

Prescription 

114.  Criminal  actions  referred  to  in  this  title  are  barred  by 
prescription  after  the  lapse  of  three  years  from  the  day  on 
which  the  act  wherein  the  action  originated  was  committed,  in 
all  cases  where  the  person  to  whose  detriment  the  act  was  com- 
mitted, had  no  previous  knowledge  thereof;  in  other  cases  the 
term  of  prescription  shall  be  one  year  from  the  day  on  which 
such  person  became  aware  of  that  act. 

Imported  goods 

115.  The  importation  of  goods  which,  if  sold,  would,  under 
this  Ordinance,  be  liable  to  forfeiture,  and  also  all  goods  manu- 
factured out  of  these  islands  and  out  of  the  United  Kingdom, 
bearing  any  Maltese  or  English  name  or  trade  mark,  and  not 
being,  in  the  latter  case,  accompanied  by  a  definite  indication 


576  MALTA 

of  the  country  in  which  such  goods  were  produced,  is  prohibited. 
This  provision  shall  not  be  applicable  to  goods  which  shall 
be  landed  in  these  islands  to  be  re-exported. 

116.  Forfeiture  shall  take  place  ipso  jure  if,  within  one 
month  from  the  date  of  the  publication  of  a  notice  hereunder 
referred  to,  they  are  not  claimed  by  any  one. 

The  said  notice  shall  indicate  the  articles  to  be  forfeited 
and  the  cause  of  forfeiture;  shall  state  that,  unless  claimed, 
by  an  official  letter  or  by  any  other  letter  addressed  to  the 
person  who  signed  the  notice,  within  one  month  from  the  date 
of  such  notice,  the  said  goods  shall  be  forfeited ;  shall  be  signed 
by  the  Collector  of  Customs;  shall  be  published  twice,  with  an 
interval  of  at  least  fifteen  days,  in  the  Government  Gazette  and 
in  any  other  periodical  newspaper,  and  shall  be  posted  up  at 
the  entrance  of  the  Custom  House  and  in  the  Commercial 
Exchange. 

117.  If  the  goods  are  claimed,  the  Crown  Advocate  shall, 
as  soon  as  possible,  apply  to  the  First  Hall  of  Her  Majesty's 
Civil  Court  by  way  of  petition  for  an  order  for  the  forfeiture 
of  the  goods  seized. 

118.  The  Collector  of  Customs  may,  before  refusing  to 
deliver  the  goods  referred  to  in  Art.  115,  and  before  proceeding, 
after  the  publication  of  the  said  notice,  with  a  view  to  the 
forfeiture  of  the  said  goods — and  the  Crown  Advocate  may, 
before  instituting  the  proceedings  mentioned  in  the  preceding 
article,  require  the  provisions  of  the  regulations  hereunder 
named  to  be  complied  with  by  the  parties  concerned,  and  they 
shall  satisfy  themselves,  in  accordance  with  those  regulations, 
that  the  said  articles  are  among  those  the  importation  of  which 
is  prohibited  under  this  Ordinance. 

Powers  of  Head  of  the  Government 

119.  The  Head  of  the  Government  may  make,  revoke  and 
vary  regulations,  either  general  or  special,  respecting 

1)  The  seizure  and  forfeiture  of  goods  the  importation  of 
which  is  prohibited  by  Art.  115 ; 

2)  The  conditions  to  be  fulfilled  before  such  seizure  or 
forfeiture ; 

3)  The  information,  notices,  and  security  to  be  given,  and 
the  evidence  requisite  for  the  purposes  of  the  preceding  article ; 

4)  The  reimbursement  to  the  Government  by  the  person 
who  had  given  the  information  on  which  the  said  articles  were 
unjustly  seized  or  forfeited,  of  all  expenses  and  damages  in- 
curred in  consequence  of  such  unjust  seizure  or  forfeiture,  and 
of  any  proceedings  consequent  on  such  seizure  or  forfeiture. 


MALTA  577 

Presumption  of  warranty  as  to  genuineness  of  mark 

120.  For  the  purposes  of  this  Ordinance,  on  the  sale  of 
any  things  to  which  a  trade  mark,  or  other  mark,  or  trade  de- 
scription has  been  applied,  the  vendor  shall  be  deemed  to  war- 
rant that  the  trade  mark,  other  mark,  or  description  is  genuine 
and  not  forged,  unless  the  contrary  is  proved  by  some  writing 
signed  by  the  vendor  and  delivered,  at  the  time  of  the  sale,  to 
the  purchaser  and  accepted  by  the  latter. 

Use  of  forged  marks 

121.  The  provisions  of  this  Chapter  referring  to  the  use 
of  forged  marks  shall  not  apply  to  the  use  which  will  be  made 
of  any  mark  of  manufacture  or  description  used  in  trade  to 
indicate  any  goods  of  any  particular  kind,  or  their  manufacture 
by  any  particular  method,  where,  at  the  promulgation  of  this 
Ordinance,  that  mark  or  description  is  lawfully  and  generally 
applied  for  the  above  mentioned  purpose. 

If,  however,  such  mark  or  description  includes  the  name  of 
a  place  or  country  where  the  goods  to  which  the  genuine  com- 
mercial designation  thereof  refers  were  produced,  and  such 
name  is  calculated  to  mislead  as  to  the  place  or  country  where 
the  goods  were  actually  produced,  and  the  goods  were  not  pro- 
duced in  the  place  or  country  indicated  in  the  description  in 
use — the  provision  contained  in  the  preceding  paragraph  shall 
not  apply,  unless  there  is  added  to  the  mark  immediately  before 
or  under  the  name  of  the  said  place  or  country,  in  an  equally 
conspicuous  manner,  the  name  of  the  place  or  country  in  which 
the  goods  were  actually  made  or  produced — and  unless  there  is 
also  stated  that  the  goods  were  made  or  produced  in  that  place 
or  country. 

122.  The  provisions  of  this  Chapter  shall  apply  without 
prejudice  to  the  payment  of  damages  to  persons  entitled  thereto. 

No  one  exempt  from  declaring  anything  he  knows 

123.  No  person  shall  be  exempt  from  declaring  anything 
which  he  knows,  nor  shall  any  witness  be  exempt  from  giving 
evidence  in  any  proceeding,  on  the  ground  that  he  might  become 
liable  to  be  prosecuted  for  any  one  of  the  offences  contemplated 
in  this  Chapter;  but  such  declaration  or  evidence  shall  not  be 
admissible  in  evidence  against  such  person  in  any  proceeding 
instituted  with  reference  to  such  offence. 

Good  faith 

124.  No  proceeding  shall  be  instituted  against  any  servant 
of  a  master  resident  in  these  islands,  if  he  bona  fide  acted  in 
obedience  to  the  instructions  of  such  master,  and,  being  ques- 
tioned by  the  Police,  has  given  full  information  as  to  his  master. 


578  MALTA 

TITLE  V 

OF  THE  REGISTERS  OF  PATENTS,  OF  DESIGNS  AND  MODELS  OF  MANU- 
FACTURE, AND  OF  TRADE  MARKS 
Registers  to  be  kept  in  Public  Registry 

125.  There  shall  be  kept  in  the  Public  Registry  ...  a 
Register  of  Trade  Marks. 

What  they  shall  contain 

126.  In  each  of  the  said  books  the  patents  issued  .   .   . 
shall  be  entered,  and  so  also  all  subsequent  modifications,  as 
well  as  revocations,  declarations  of  nullity,  and  forfeitures  of 
the  said  acts,  and  such  other  matters  the  registration  whereof 
shall  be  prescribed  by  the  regulations  made  by  the  Head  of 
the  Government. 

Register  of  transfers 

127.  There  shall  also  be  kept  in  the  Public  Registry  a 
Register  of  Transfers  of  ...  trade  marks,  and  an  annotation 
of  such  transfers  shall  be  made  against  the  original  entry  of 
the  .   .   .  right  transferred. 

Annotation  in  Registers 

128.  In  the  office  of  the  Comptroller,  as  well  as  in  the 
Public  Registry,  there  shall  likewise  be  kept  three  other  regis- 
ters in  each  of  which  shall  be  entered,  under  a  progressive  num- 
ber, with  reference  to  the  subject  to  which  each  book  refers,  all 
documents  filed,  the  names,  surnames,  country,  father's  name 
and  place  of  domicile  of  applicants  and  their  attorneys,  the 
subject  of  applications,  and  the  date  of  presentation. 

To  these  entries  there  shall  be  added,  .  .  .  third,  in  the 
Register  of  Applications  for  registration  of  trade  marks,  an 
indication  of  the  object  for  which  the  marks  are  destined. 

130.  In  each  of  the  Registers  referred  to  in  the  preceding 
articles,  a  column  shall  be  reserved  for  any  annotations  which 
may  occur. 

Alphabetical  index 

131.  To  each  of  those  Registers  there  shall  be  added  an 
alphabetical  index  of  the  surnames  and  names  of  those  persons 
whose  right  or  application  has  been  registered. 

In  the  index  of  the  Registers  for  applications  and  transfers, 
reference  shall  be  made  to  the  progressive  number  of  the  gen- 
eral register. 

Registers  to  be  accessible 

132.  Saving  the  provision  of  Art.  69,  the  said  Registers 
shall  be  open  to  any  person  in  the  Public  Registry,  and  copies 


MALTA  579 

or  extracts  thereof,  written  or  printed,  signed  by  the  Director 
of  the  Public  Registry,  be  given  to  any  person  applying  for  the 
same  on  payment  of  the  fees  established  in  the  annexed  schedule, 
to  be  made  at  the  time  of  the  application. 

Registers  and  Extracts  to  be  Evidence  of  Their  Contents 

133.  The  Registers  as  well  as  extracts  from  the  Registers, 
and  certificates  signed  by  the  Director  of  the  Public  Registry, 
shall  be  evidence  of  their  contents,  until  proof  to  the  contrary. 

No  proof  of  their  authenticity  is  required  other  than  that 
which  they  bear  on  the  face  of  them. 

Rectification  or  cancelling  of  registrations 

134.  Any  person  may  judicially  apply  for  the  rectification 
or  cancelling  of  any  entry  made,  or  for  the  entry  of  any  act 
which  the  Comptroller  may  have  refused  to  enter. 

Proceedings 

The  application  shall  be  made  in  the  First  Hall  of  Her 
Majesty's  Civil  Court,  on  a  citation  being  made  against  the 
Comptroller,  the  Director  of  the  Public  Registry,  and  a  Curator 
to  be  appointed  by  the  Court  for  any  person  having  interest  in 
the  matter. 

135.  Fifteen  days  at  least  before  the  trial  of  the  cause 
relating  to  the  application  referred  to  in  the  preceding  article, 
a  notice  shall,  by  order  of  the  Court,  be  published  in  the  Gov- 
ernment Gazette,  calling  upon  any  interested  party  to  declare, 
within  fifteen  days  from  the  publication  of  the  said  notice,  by 
a  note,  whether  he  intends  to  oppose  such  application. 

To  those  persons  who  shall,  within  the  said  term,  have 
filed  such  notes,  notice  shall  be  given  of  the  day  appointed  for 
the  hearing  of  the  cause. 

136.  The  provisions  of  the  two  preceding  articles  shall 
not  prevent  the  application  of  the  provisions  contained  in  Arts. 
977,  978,  and  979  of  the  Laws  of  Organization  and  Civil  Pro- 
cedure. 

Term  for  making  rectification,  cancelling,  or  entry 

137.  The  rectification,  cancelling,  or  entry  ordered  by  the 
Court  shall  be  made  by  the  Comptroller  and  the  Director  of 
the  Public  Registry  within  the  term  of  ten  days  from  the  day 
on  which  the  judgment  shall  have  become  final  and  absolute. 

Reference  to  the  judgment  shall  be  made  by  a  note  in  the 
margin  of  the  respective  Register. 

A  rectification,  however,  consisting  in  rectifying  an  error 
incurred  in  transcribing  an  act  in  the  Register  may  be  made  by 
the  Comptroller  under  the  simple  authority  of  the  Director  of 
the  Public  Registry. 


580  MALTA 

The  Director  giving  the  aforesaid  authority  shall  counter- 
sign the  rectification  made. 

•  •  »  •  •  •  •  •  •  ;• 

Copy  of  marks  to  be  sent  to  Chamber  of  Commerce 

139.  A  copy  of  the  trade  marks  or  other  marks  which, 
according  to  Art.  75  are  to  be  sent  to  the  Comptroller,  shall  be 
kept  by  him,  and  rendered  accessible  to  the  public,  and  another 
copy  shall  be  sent  by  him  to  the  Chamber  of  Commerce,  whose 
duty  it  shall  also  be  to  keep  the  said  articles  and  to  render  them 
accessible  to  the  inspection  of  the  public. 

TITLE  VI 
CHAPTER  I 

SPECIAL  AND  TRANSITORY  PROVISIONS 
Power  of  Head  of  Government  to  make  regulations 

140.  The  Head  of  the  Government  shall  have  power  to 
make,  from  time  to  time,  regulations  referring  to  what  may 
become  necessary  to  put  in  force  this  Ordinance.    Such  regula- 
tions shall  be  published  by  a  notice  in  the  Government  Gazette. 

Fees  under  this  Ordinance 

141.  The  fees  payable  to  the  Government  according  to  the 
provisions  of  this  Ordinance  shall  be  taxed  and  levied  in  ac- 
cordance with  the  schedules  hereto  annexed. 

Costs  of  proceedings 

142.  The  costs  in  the  various  proceedings  which  shall  be 
instituted  under  this  Ordinance  shall  be  taxed  and  levied  accord- 
ing to  the  tariffs  annexed  to  the  Laws  of  Organization  and 
Civil  Procedure. 

When  this  Ordinance  is  to  take  effect 

143.  This  Ordinance  shall  take  effect  on  1st  January,  1900. 

CHAPTER  II 

Repeal 

147.  From  the  date  on  which  this  Ordinance  commences  to 
take  effect,  the  following  legislative  enactments,  saving  the 
provision  of  Art.  144*,  shall  be  repealed  and  abrogated,  except 
in  so  far  as  they  repeal  other  provisions,  namely,  Ordinance 
No.  V  of  1893,  Ordinance  No.  I  of  1894,  and  any  other  ordinance, 
law,  or  regulation  which  is  contrary  to,  or  incompatible  with, 
the  provisions  of  this  Ordinance. 

*  Reference  to  patents  only. 


MAURITIUS 

ORDINANCE  NO.  18  OF  [OCTOBER  20,]  1868 

Construction  of  Words 

I.  In  the  construction  of  this  Ordinance  the  word  "per- 
son" shall  include  any  person,  whether  a  subject  of  Her  Majesty 
or  not,  and  any  body  corporate  or  body  of  the  like  nature 
whether  constituted  according  to  the  law  of  this  Colony  or  of 
any  of  Her  Majesty's  Dominions,  or  according  to  the  law  of 
any  foreign  country,  and    also    any  company,  association  or 
society  of  persons,  whether  the  members  thereof  be  subjects  of 
Her  Majesty  and  some  of  them  not,  and  whether  such  body 
corporate,  body  of  the  like  nature,  company,  association,  or 
society  be  established  or  carry  on  business  within  this  Colony 
or  elsewhere,  or  partly  within  this  Colony  and  partly  elsewhere. 
The  word  "mark"  shall  include  any  name,  signature,  word, 
letter,  device,  emblem,  figure,  sign,  seal,  stamp,  diagram,  label, 
ticket,  or  other  mark  of  any  other  description.    The  expression 
"trade-mark"  shall  include  any  and  every  such  name,  signa- 
ture, word,  letter,  device,  emblem,  figure,  sign,  seal,  stamp, 
diagram,  label,  ticket,  or  other  mark  as  aforesaid  lawfully  used 
by  any  person  to  denote  any  article  of  trade,  manufacture,  or 
merchandise,  to  be  an  article  or  thing  of  the  manufacture,  work- 
manship, production,  or  merchandise  of  such  person,  or  to  be 
an  article  of  any  peculiar  or  particular  description  made  or  sold 
by  such  person. 

All  Trade-Marks  to  be  Registered 

II.  No  mark  shall  have  the  character  of  a  trade-mark  in 
this  Colony  until  it  has  been  duly  registered  in  manner  as 
hereinafter  provided. 

Application  for  Registration 

III.  Every  person  wishing  to  register  a  trade-mark  which 
he  has  a  right  to  use  shall,  for  that  purpose,  either  by  himself 
or  by  any  party  duly  authorized  by  him  on  that  behalf,  make 
application  in  writing  to  the  Collector  of  Customs  of  this  Colony. 

The  application  shall  state  what  articles  of  trade,  manufac- 
ture, or  merchandise,  being  the  manufacture,  workmanship, 
production  or  merchandise  of  the  applicant,  such  trade-mark 
is  intended  to  denote ;  and  it  shall  further  state,  if  necessary,  to 
what  peculiar  or  particular  description  of  such  article  the  said 
trade-mark  is  intended  to  apply.  To  the  said  application  shall 
be  joined  a  facsimile  of  the  trade-mark  to  be  registered. 


582  MAURITIUS 

Mode  of  Registration 

IV.  The  Collector  of  Customs  shall  keep  a  Register  of 
Trade-Marks  duly  numbered  and  initialed  by  one  of  the  Dis- 
trict Magistrates  of  Port  Luis,  upon  which  he  shall  transcribe 
every  application  made  to  him  as  aforesaid.    He  shall  mention 
in  the  margin  of  the  transcription  the  date  when  he  received 
the  application,  and  he  shall  give  a  number  to  each  such  appli- 
cation.   He  shall  make  the  same  mention,  and  affix  the  same 
number  upon  the  trade-mark  deposited  with  him,  and  he  shall 
file  and  keep  the  said  trade-mark  in  a  proper  and  convenient 
place  in  his  office.    He  shall  then  return  to  the  person  who  has 
applied  for  the  registration  of  a  trade-mark  the  written  appli- 
cation made  by  such  person,  after  endorsing  thereupon  a  cer- 
tificate of  registry,  in  the  form  of  Schedule  A  hereunto  annexed. 

Every  person  who  has  caused  a  trade-mark  to  be  registered 
shall  give  notice  thereof  in  three  daily  newspapers,  and  such 
notice  shall  contain  a  summary  description  of  the  trade-mark 
and  the  date  of  its  registration. 

The  Collector  of  Customs  shall  in  the  beginning  of  each 
month  publish  in  the  Government  Gazette  a  list  containing  the 
names  of  the  parties  who  have  registered  trade-marks,  the  date 
of  the  registration,  and  a  summary  description  of  the  trade- 
mark registered. 

Registered  Trade-Marks  Presumed  Genuine 

V.  Every  trade-mark  deposited  with  the  Collector  of  Cus- 
toms, and  touching  which  a  certificate  of  registry  has  been  de- 
livered by  the  Collector,  shall,  in  every  Court  in  this  Colony, 
be  presumed  to  be  a  genuine  trade-mark,  unless  proof  to  the 
contrary  be  adduced,  and  it  shall  be,  as  such,  admissible  in 
evidence  in  every  criminal  prosecution  under  this  Ordinance  as 
well  as  in  every  civil  action  which  the  proprietor  of  the  trade- 
mark may  be  entitled  to  at  law,  in  equity,  or  otherwise. 

Registration  Fee 

VI.  A  fee  of  £1  shall  be  paid  into  the  hands  of  the  Collec- 
tor of  Customs  for  each  certificate  of  registry  delivered  by  him 
under  the  provisions  of  this  Ordinance. 

Right  of  Search 

VII.  Upon  payment  of  a  fee  of  two  shillings  it  shall  be 
lawful  for  any  person  to  examine  the  Register  of  Trade-Marks 
kept  by  the  Collector  of  Customs,  as  well  as  the  trade-marks 
filed  in  his  office. 

The  fees  mentioned  in  this  article  and  in  the  preceding 
article  shall  be  paid  into  the  Colonial  Treasury. 
Counterfeiting  a  Trade-Mark 

VIII.  Every  person  who,  with  intent  to  defraud,  or  to 


MAURITIUS  583 

enable  another  to  defraud  any  person,  shall  counterfeit,  or  cause 
or  procure  to  be  counterfeited  any  trade-mark,  or  who  shall 
sell,  barter,  utter  or  register  any  counterfeit  trade-mark,  or 
who  shall  obliterate  an  original  trade-mark,  shall  be  punished 
by  imprisonment,  with  or  without  labor,  for  a  term  not  less  than 
one  month  and  not  more  than  one  year  and  by  a  fine  not  ex- 
ceeding £20. 

Applying  Counterfeited  Trade-Marks 

IX.  Every  person  who,  with  intent  to  defraud  or  to  enable 
another  to  defraud  any  person,  shall  apply,  or  cause  or  procure 
to  be  applied,  any  counterfeited  trade-mark  to  any  article  of 
trade,  manufacture  or  merchandise,  shall  be  punished  by  im- 
prisonment, with  or  without  labor,  for  a  term  not  less  than  one 
month  and  not  more  than  one  year,  and  by  a  fine  not  exceed- 
ing £20. 

Such  person  shall  also,  upon  conviction,  incur  the  forfeiture 
of  every  article  to  which  he  shall  have  so  unlawfully  applied  or 
caused  or  procured  to  be  applied  any  such  counterfeited  trade- 
mark. 

Falsely  Applying  any  Trade-Mark 

X.  Every  person  who,  with  intent  to  defraud  or  enable 
another  person  to  defraud  any  person,  shall  apply  or  cause  or 
procure  to  be  applied  any  trade-mark,  whether  genuine  or  coun- 
terfeited, to  any  article  not  being  the  manufacture,  workman- 
ship, production  or  merchandise,  or  not  being  the  particular  or 
peculiar  description  thereof,  denoted  or  intended  to  be  denoted 
by  such  trade-mark,  shall  be  liable  to  the  penalties  and  forfeiture 
imposed  by  the  preceding  article. 

Selling  Articles  with  False  Trade-Marks 

XI.  Every  person  who,  after  the  1st  November,  1868,  shall 
sell,  utter,  or  expose  either  for  sale  or  for  any  purpose  of  trade 
or  manufacture,  or  cause  or  procure  to  be  sold,  uttered,  or  ex- 
posed for  sale  or  other  purpose  as  aforesaid  any  article,  together 
with  any  counterfeited  trade-mark,  which  he  shall  know  to  be 
counterfeited,  or  together  with  the  trade-mark  of  any  person 
applied  or  used  falsely  or  wrongfully;  or  without  lawful  au- 
thority or  excuse,  knowing  such  trade-mark  of  another  person 
to  have  been  applied  or  used  as  aforesaid,  shall  for  every  such 
offence  forfeit  a  sum  of  money  equal  to  the  value  of  the  article 
so  sold,  uttered,  offered,  or  exposed  for  sale  or  other  purpose 
as  aforesaid,  and  a  further  sum  not  exceeding  £5,  and  not  less 
than  £1. 

Counterfeit  of  Mark  and  Counterfeiting  Defined 

XII.  Every  addition  to,  and  every  alteration  of,  and  also 
every  imitation  of  any  trade-mark  which  shall  be  made,  applied 


584  MAURITIUS 

or  used  with  intent  to  defraud,  or  to  enable  others  to  defraud, 
or  which  shall  cause  a  trade-mark  with  such  alteration  or  addi- 
tion, or  which  shall  cause  such  imitation  of  a  trade-mark  to  re- 
semble any  genuine  trade-mark,  so  as  to  be  calculated  or  likely 
to  deceive,  shall  be  deemed  a  counterfeit  trade-mark  within  the 
meaning  of  this  Ordinance ;  and  every  act  of  making,  applying 
or  using  any  such  addition  to  or  alteration  of  a  trade-mark,  or 
any  such  imitation  of  a  trade-mark  as  aforesaid  done  by  any 
person  with  intent  to  defraud  or  to  enable  others  to  defraud, 
shall  be  deemed  to  be  counterfeiting  a  trade-mark  within  the 
meaning  of  the  present  Ordinance. 

Affixing  of  Mark  Defined 

XIII.  For  the  purposes  of  the  present  Ordinance  a  trade- 
mark shall  be  deemed  and  taken  to  be  applied  to  any  article  of 
merchandise,  although  the  same  may  not  be  directly  applied 
thereto,  but  may  be  applied  to  any  cask,  bottle,  stopper,  vessel, 
case,  cover,  wrapper,  band,  reel,  ticket  or  other  thing  in  or  with 
which  such  article  shall  be  intended  to  be  sold  or  uttered,  or 
exposed    for    sale,  or  intended  for  any  purpose  of  trade  or 
manufacture. 

Vendor  of  goods  illegally  marked  to  account  for  possession — 
Penalty  for  refusal — Refusal  to  be  evidence  of  guilt 

XIV.  When  any  person  who,  at  any  time  after  the  1st 
November,  1868,  shall  have  sold,  uttered  or  exposed  for  sale  or 
other  purpose  as  aforesaid,  or  shall  have  caused  or  procured 
to  be  sold,  uttered  or  exposed  for  sale  or  other  purpose  as  afore- 
said, any  article  together  with  any  counterfeit  trade-mark  or 
together  with  the  trade-mark  of  any  other  person  used  without 
lawful  authority  or  excuse  as  aforesaid,  such  person  shall  be 
bound,  upon  demand  in  writing  delivered  to  him  or  left  for  him 
at  his  last  known  dwelling  house  or  at  the  place  of  sale  as  afore- 
said, by  or  on  behalf  of  the  person  whose  trade-mark  shall  have 
been  so  counterfeited  or  used  without  lawful  authority  or  excuse 
as  aforesaid,  to  give  to  the  person  requiring  the  same  or  his 
attorney  or  agent,  within  48  hours  after  such  demand,  full  infor- 
mation of  the  name  and  address  of  the  person  from  whom  he 
shall  have  purchased  or  received  such  article  and  of  the  time 
when  be  obtained  the  same,  and  it  shall  be  lawful  for  any  Dis- 
trict Magistrate,  on  information  on  oath  of  such  demand  and 
refusal,  to  summon  before  him  the  party  refusing,  and,  on  being 
satisfied  that  such  demand  ought  to  be  complied  with,  to  order 
such  information  to  be  given  within  a  certain  delay  to  be 
appointed  by  him. 

And  any  such  party  who  shall  refuse  or  neglect  to  comply 


MAURITIUS  585 

with,  such  order,  shall  for  every  such  offence  forfeit  and  pay  to 
Her  Majesty  the  sum  of  £5. 

Any  such  refusal  or  neglect  shall  be  prima  facie  evidence 
that  the  person  so  refusing  or  neglecting  had  full  knowledge 
that  the  trade-mark,  together  with  such  article  was  sold,  uttered 
or  exposed  as  aforesaid,  at  time  of  such  selling,  uttering  or 
exposing,  was  a  counterfeit  trade-mark,  or  was  the  trade-mark 
of  a  person  which  had  been  used  without  lawful  authority  or 
excuse  as  the  case  may  be. 

Commonplace  Designation  of  Goods,  Not  Prohibited 

XV.  Provided  always  that  the  provisions  of  this  Ordinance 
shall  not  be  construed  so  as  to  make  it  any  offence  for  any 
person  to  apply  to  any  article  of  trade,  manufacture,  or  mer- 
chandise, any  name,  word  or  expression  generally  used  for  indi- 
cating such  article  to  be  of  some  particular  class  or  description 
of  manufacture  only,  or  so  as  to  make  it  any  offence  for  any 
person  to  sell,  utter  of  offer,  or  expose  for  sale  any  article  to 
which  any  such  generally  used  name,  word  or  expression,  as 
aforesaid,  shall  have  been  applied. 

Mention  of  Mark  in  Information 

XVI.  In   every   information,   pleading,   proceeding,    and 
document  whatsoever,  in  which  any  trade-mark  or  counterfeit 
trade-mark  shall  be  intended  to  be  mentioned,  it  shall  be  suf- 
ficient to  mention  or  state  the  same  to  be  a  trade-mark  or  coun- 
terfeit trade-mark,  as  the  case  may  be,  without  further  or  other- 
wise describing  such  trade-mark  or  counterfeit  trade-mark  or 
setting  forth  any  copy  of  facsimile  thereof. 

Allegation  of  Fraud  in  Information 

XVII.  In   every   information,   conviction,   pleading,   and 
proceeding  against  any  person  for  any  offence  against  the  pro- 
visions of  this  Ordinance  in  which  it  shall  be  necessary  to  allege 
or  mention  an  intent  to  defraud  or  to  enable  another  to  defraud, 
it  shall  be  sufficient  to  allege  or  mention  that  the  person  accused 
of  such  offence  committed  the  same  with  intent  to  defraud  or 
with  intent  to  enable  some  other  person  to  defraud,  without 
alleging  or  mentioning  an  intent  to  defraud  any  particular  per- 
son.   And  upon  the  trial  for  such  offence  it  shall  not  be  neces- 
sary to  prove  an  intent  to  defraud  any  particular  person  or  to 
enable  any  particular  person  to  defraud  any  particular  person ; 
but  it  shall  be  sufficient  to  prove  that  the  accused  did  the  act 
charged  with  an  intent  to  defraud  or  with  the  intent  that  any 
other  person  might  be  enabled  to  defraud. 

Disposal  of  Seizures 

XVIII.  All  articles  condemned  as  forfeited,  under  any  of 


586  MAURITIUS 

the  provisions  of  this  Ordinance,  shall  be  destroyed  or  otherwise 
disposed  of  as  the  Court,  pronouncing  such  condemnation,  shall 
order. 

By  Whom  Prosecution  To  Be  Instituted 

XIX.  Any  prosecution  or  other  proceedings,  instituted  for 
any  offence  against  the  provisions  of  this  Ordinance,  may  be 
instituted  by  any  party  duly  authorized  in  that  behalf  by  letter 
or  power  of  attorney  from  the  proprietor  of  the  particular 
trade-mark  alleged  to  be  counterfeited  without  prejudice  to  the 
rights  of  the  Procureur  General  to  institute  the  same. 

Conviction  Not  to  Affect  Any  Right  to  Civil  Remedy 

XX.  The  provisions  in  this  Ordinance  contained  of  or 
concerning  any  offence,  or  any  proceeding,  judgment  or  convic- 
tion for  any  offence  against  this  Ordinance,  shall  not  nor  shall 
any  of  them  take  away,  diminish,  or  prejudicially  affect  any 
suit,  process,  proceeding,  right,  or  remedy  which  any  person 
aggrieved  by  such  offence  may  be  entitled  to  at  law,  in  equity, 
or  otherwise. 

XXI.  In  every  case  in  which  at  any  time,  after  the  1st 
November,  1868,  any  person  shall  sell  or  contract  to  sell  (whether 
by  writing  or  not)  to  any  other  person  any  article  with  any 
trade-mark  thereon,  the  sale  or  contract  to  sell  shall  in  every 
such  case  be  deemed  to  have  been  made  with  a  warrant  or  con- 
tract by  the  vendor  to  or  with  the  purchaser  that  every  trade 
mark  upon  such  article  was  genuine  and  true  and  not  counterfeit 
and  not  wrongfully  used,  unless  the  contrary  shall  be  expressed 
in  some  writing,  signed  by  or  on  behalf  of  the  vendor  and  de- 
livered to  and  accepted  by  the  purchaser. 

In  Suits  at  Laiv  the  Court  May  Order  Article  to  be 
Destroyed,  etc. 

XXII.  In  every  case,  in  any  suit  at  law,  against  any  person 
for  counterfeiting  any  trade-mark  or  for  fraudulently  applying 
any  trade-mark  to  any  article  of  trade,  manufacture  or  mer- 
chandise, or  for  selling,  exposing  for  sale,  or  uttering  any  article 
with  any  trade-mark  falsely  or  wrongfully  applied  thereto,  or 
with  any  counterfeited  trade  mark  applied  thereto,  or  for  pre- 
venting the  repetition  or  continuance  of  any  such  wrongful  act, 
or  for  the  committal  of  any  similar  act,  in  which  the  plaintiff 
shall  obtain  a  judgment  against  the  defendant,  the  Court  shall 
have  power  to  direct  every  such  article  to  be  destroyed  or  de- 
livered to  the  Poor  Law  Commissioners  for  the  use  of  the  poor, 
or  otherwise  disposed  of. 

In  Suits  at  Law  the  Court  May  Order  Inspection 

XXIII.  In  every  such  suit,  in  a  court  of  law,  the  Court  or 


MAURITIUS  587 

a  Judge  thereof  may  make  such  order  as  such  Court  or  Judge 
shall  think  fit  for  the  inspection  of  every  or  any  manufacture  or 
process  carried  on  by  the  defendant  in  which  any  such  counter- 
feit trade-mark  or  any  such  trade-mark  as  aforesaid  shall  be 
alleged  to  be  used  or  applied  as  aforesaid,  and  of  every  or  any 
article  or  thing  in  the  possession  or  power  of  the  defendant 
alleged  to  have  thereon,  or  in  any  way  attached  thereto,  any 
counterfeit  trade-mark  or  any  trade-mark  falsely  or  wrongfully 
applied,  and  every  or  any  instrument  in  the  possession  or  power 
of  the  defendant  used  or  intended  to  be  or  capable  of  being 
used  for  producing  or  making  any  counterfeit  trade-mark,  or 
trade-mark  alleged  to  be  counterfeit,  or  for  falsely  or  wrong- 
fully applying  any  trade-mark. 

Any  person  who  shall  refuse  or  neglect  to  obey  any  such 
order  shall  be  guilty  of  contempt  of  court. 

Provisional  Seizure 

XXIV.  In  any  such  suit,  civil  or  criminal,  in  any  court  of 
law,  the  Court  or  a  Judge  thereof  may,  pending  the  proceedings, 
order  the  provisional  seizure,  and  the  deposit  in  any  place,  or 
under  the  guardianship  of  any  person,  as  such  Court  or  Judge 
shall  think  fit,  of  any  article  or  thing,  in  the  possession  or  power 
of  the  defendant,  alleged  to  have  thereon,  or  in  any  way  attached 
thereto,  any  counterfeit  trade-mark  or  any  trade-mark  falsely 
or  wrongfully  applied,  and  of  every  or  any  instrument  in  the 
possession  or  power  of  the  defendant  used  or  intended  to  be 
or  capable  of  being  used  for  producing  or  making  any  counter- 
feit trade-mark,  or  for  falsely  or  wrongfully  applying  any  trade- 
mark. 

Indemnity  to  Successful  Defendant 

XXV.  In  every  suit  or  prosecution  which  any  person  shall, 
under  the  provisions  of  this  Ordinance,  commence,  as  plaintiff 
in  a  civil  suit,  or  as  complainant  in  a  criminal  case,  if  the  de- 
fendant shall  obtain  judgment,  he  shall  be  entitled  to  recover 
his  costs  of  suit  and  further  an  indemnity  for  the  charges  and 
expenses  by  him  expended  or  incurred  in,  about,  or  for  the 
purposes  of  such  suit  or  prosecution,  and  such  indemnity  shall 
be  fixed  and  awarded  by  the  Court  before  which  the  proceedings 
have  taken  place,  in  the  judgment  given  by  such  Court. 

Limitations  of  Actions 

XXVI.  No  person  shall  commence  any  action  or  proceed- 
ing for  the  recovery  of  any  penalty  or  procuring  the  conviction 
of  any  offender  in  manner  hereinbefore  provided,  after  expira- 
tion of  three  years  next  after  the  committing  of  the  offence,  or 
one  year  next  after  the  first  discovery  thereof  by  the  person 
proceeding. 


588  MAURITIUS 

Short  Title 

XXVII.  The  expression  "The  Trade-Marks  Ordinance, 
1868,'*  shall  be  a  sufficient  description  of  this  Ordinance. 

Repeal  of  Ordinance  No.  4  of  1868 

XXVIII.  Ordinance  No.  4  of  1868,  entitled  "An  Ordinance 
to  Amend  the  Law  Relating  to  the  Fraudulent  Marking  of  Mer- 
chandise," is  hereby  repealed. 

Date  of  Operation 

XXIX.  This  Ordinance  shall  come  into  force  on  and  after 
the  1st  day  of  November  A.  D.  1868. 


MEXICO 

LAW  OF  AUGUST  25,  1903 

ARTICLE  1.  A  trade  mark  is  the  characteristic  and  peculiar 
sign  or  denomination  used  by  an  industrial,  agrarian,  or  mer- 
chant, on  the  articles  that  he  produces  or  sells,  with  the  pur- 
pose of  distinguishing  them  and  indicating  their  origin. 

There  may,  in  particular,  constitute  a  mark:  names  in  a 
distinctive  form,  denominations,  labels  or  brands,  coverings, 
containers  or  recipients,  stamps,  seals,  vignettes,  borders,  em- 
broiderings,  filagrees,  engravings,  escutcheons,  emblems,  reliefs, 
ciphers,  devices,  etc.,  it  being  understood  that  this  enumeration 
is  purely  enunciative  and  not  limitative. 

ART.  2.  To  obtain  the  exclusive  right  to  the  use  of  a  mark, 
it  is  necessary  to  effect  its  registration  in  the  Patent  and  Trade 
Mark  Office,  by  fulfilling  the  formalities  that  the  present  law 
and  its  regulation  establish. 

ART.  3.  Whoever  shall  desire  to  register  a  mark  shall  pre- 
sent at  the  Patent  and  Trade  Mark  Office  an  application  accom- 
panied by  the  following : 

I.  A  description  of  the  mark,  concluding  same  with  the 
reservations  that  shall  be  made  therein.    In  this  document  there 
shall,  in  addition,  be  given  the  following  data :  the  name  of  the 
proprietor,  the  name  of  his  factory  or  business,  should  he  have 
such,  the  location  thereof,  and  designation  of  the  objects  or 
products  to  which  the  mark  is  to  be  affixed. 

If  it  shall  be  necessary,  in  the  opinion  of  the  party  inter- 
ested, there  shall  likewise  be  included  a  description  and  design 
of  those  objects  or  products. 

II.  Two  copies  of  the  foregoing  document ; 

III.  A  cliche  (electrotype)  of  the  mark;  and 

IV.  Twelve  facsimiles  of  the  mark,  such  as  it  is  to  be  used. 
ART.  4.    Any  Mexican  or  foreigner  may  register  a  mark. 

For  this  he  must  apply  at  the  Patent  and  Trade  Mark  Office  in 
person  or  through  the  intermediary  of  an  attorney. 

Societies,  companies,  and,  in  general,  all  legal  persons, 
shall  have  the  same  right. 

The  qualification  of  attorney  may  be  evidenced  with  a  simple 
letter-power,  signed  in  the  presence  of  two  witnesses ;  the  Office, 
when  it  so  deems  expedient,  may  require  the  authentication  of 
the  signatures  of  said  letter. 

ART.  5.    There  may  not  be  registered  as  marks: 

I.  Generic  names  or  denominations,  when  the  marks  pro- 


590  MEXICO 


objects  that  are  comprised  in  the  class  or  kind  to  which 
the  name  or  denomination  refers,  inasmuch  as  the  indispensable 
requisite  for  a  denomination  or  name  being  possible  of  serving 
as  a  mark,  is  that  of  it  being  susceptible  of  indicating,  or  caus- 
ing to  be  distinguished,  the  goods  so  protected,  clearly,  apart 
from  others  of  their  same  kind  or  class  ; 

II.  Anything  that  is  contrary  to  morality,  to  good  usage, 
or  to  prohibitive  laws,  and  anything  that  tends  to  ridicule  ideas, 
persons,  or  objects,  worthy  of  consideration; 

III.  The  National  coat-of-arms,  escutcheons,  and  emblems  ; 

IV.  The  coats-of-arms,  escutcheons,  and  emblems,  of  the 
States  of  the  Federation,  National  or  foreign  cities,  foreign 
nations  and  States,  etc.,  without  the  respective  consent  thereof. 

V.  The  names,  signatures,  seals,  and  portraits  of  individ- 
uals, without  their  consent. 

ABT.  6.  The  registration  of  a  mark  shall  be  renewed  every 
twenty  years.  Delay  in  effecting  such  renewal  shall  not,  in 
itself,  give  rise  to  the  loss  of  the  rights  to  the  exclusive  use  of 
a  mark,  but  there  shall  be  incurred,  as  regards  the  interested 
party,  a  surcharge  in  addition  to  the  fiscal  fees  that  must  be 
paid  in  accordance  with  what  the  Regulation  stipulates,  and, 
until  such  renewal  is  effected,  the  party  interested  shall  have  no 
right  to  criminal  accusation  against  those  that  wrongly  use  or 
counterfeit  a  mark. 

ART.  7.  A  mark  whose  registration  is  petitioned  in  Mexico 
within  four  months  after  having  been  applied  for  in  one  or 
several  foreign  States,  shall  be  considered  as  having  been  regis- 
tered on  the  same  date  as  it  was  in  the  first  foreign  State  in 
which  it  shall  have  been  registered,  provided  that  that  first 
State  concedes  to  citizens  of  Mexico  this  same  right. 

Accordingly,  any  mark  registered  in  Mexico  under  these 
conditions  shall  have  absolutely  the  same  force  and  shall  pro- 
duce the  same  effects  as  it  would  have  if  it  had  been  registered 
on  the  same  day  and  hour  as  it  was  in  the  said  first  foreign 
State. 

ART.  9.  Registered  marks  shall  bear  visible  legends  that 
shall  read,  respectively: 

I.  Those  that  manufacturers,  industrials,  agrarians,  etc., 
use:  "Marca  Industrial  Registrada,"   (Registered  Industrial 
Mark),  or  even  "M.  Ind.  Rgtrda.",  the  number  and  date  of 
registration  ; 

II.  Those  that  merchants  use:  "Marca  de  Comer  do  Regis- 
trada" (Registered  Mark  of  Commerce),  or  even  "M.  de  C. 
Rgtrda.,"  the  number  and  date  of  registration; 

III.  When  marks  consist  of  names,  denominations,  legends, 


MEXICO  591 

etc.,  or  in  initial  letters  or  abbreviations;  or  when,  consisting 
in  signs  that  are  not  letters,  these  are  accompanied  by  names, 
denominations,  etc.,  or  initial  letters  or  abbreviations,  the  said 
marks  must  necessarily  bear,  in  a  conspicuous  manner,  the  name 
of  the  owner  of  the  industry,  the  name  of  the  business,  factory, 
etc.,  if  he  shall  have  such,  and  the  location  thereof. 

ART.  10.  The  registration  of  a  mark  shall  be  effected  with- 
out prior  examination  as  to  its  novelty,  under  the  exclusive 
responsibility  of  the  applicant  and  without  prejudice  to  third 
parties. 

The  Patent  and  Trade  Mark  Office  shall  make  a  purely 
administrative  examination  of  the  documents  presented,  to  the 
end  of  ascertaining  whether  they  are  complete  and  fulfill  the 
requisites  that — as  regards  their  form — this  Law  and  its  Regu- 
lation stipulate. 

If  the  Patent  and  Trade  Mark  Office  shall  find  that  the 
documents  do  not  fulfill  the  requisites,  as  to  their  form,  the 
examination  of  which  is  incumbent  on  it;  that  the  mark  does 
not,  in  its  turn,  bear  the  legends  of  which  No.  Ill  of  Art.  9 
speaks;  or  even  that  what  it  is  attempted  to  register  is  com- 
prised in  what  Art.  5  prohibits — in  its  Nos.  II  and  III — it  shall 
consider  the  documents  as  not  presented,  and  shall  so  advise 
the  party  interested  by  means  of  a  notification. 

If  the  party  interested  shall  not  be  satisfied,  he  may  appeal 
to  the  Courts,  in  accordance  with  what  Chap.  Ill  of  this  law 
stipulates. 

In  case  the  Patent  and  Trade  Mark  Office  is  satisfied  as  to 
the  regularity  of  the  documents  presented,  it  shall  so  advise  the 
party  interested  by  means  of  a  notification. 

ART.  11.  The  certificate  of  registration  of  a  mark  shall 
be  issued  by  the  Patent  and  Trade  Mark  Office.  This  certificate, 
duly  legalized  and  with  the  documents  thereto  annexed,  shall 
constitute  the  title  deed  that  accredits  the  right  to  the  exclusive 
use  of  the  mark. 

ART.  12.  Registered  marks  may  be  transferred  and  dis- 
posed of  the  same  as  any  other  right;  however,  it  shall  be  an 
indispensible  requisite  that  there  be  made  to  appear  thereon 
the  name  of  the  transferee,  when  they  are  in  the  case  to  which 
No.  Ill  of  Art.  9  refers. 

Their  transfer  shall  be  registered  in  the  Patent  and  Trade 
Mark  Office,  and  without  this  requisite  it  will  be  without  effect 
as  regards  third  parties. 

ART.  13.  The  transfer  of  a  mark  carries  with  it  the  indus- 
trial or  commercial  exploitation  of  the  industrial  products  or 
commercial  goods  protected  thereby. 


592  MEXICO 

ART.  14.  Change  of  location  of  the  establishment  in  which 
there  are  manufactured  or  sold  the  goods  that  a  mark  protects, 
or  the  fact  of  these  same  goods  being  manufactured  or  sold, 
in  an  establishment  different  from  that  in  which  they  were  for- 
mally manufactured  or  sold,  shall  be  registered  in  the  Patent 
and  Trade  Mark  Office,  and  it  shall  be  made  likewise  to  appear 
on  the  respective  mark  when  this  has  to  bear  the  legend  to 
which  No.  Ill  of  Art.  9  refers. 

ART.  15.  The  registration  of  a  mark  shall  be  null  when  it 
shall  have  been  made  in  contravention  of  the  dispositions  of 
this  law  and  its  Eegulation,  or  when  the  mark  has  been  regis- 
tered previously  by  another  if  that  registration  is  of  more  than 
two  years,  or  if,  being  of  less  than  two  years,  it  has  been  effected 
with  better  right. 

ART.  16.  Action  for  petitioning  the  avoidance  of  a  mark 
shall  correspond  to  any  one  that  shall  believe  himself  preju- 
diced thereby,  and  by  the  Public  Ministry,  in  cases  in  which 
there  may  be  some  general  interest. 

ART.  17.  The  final  judgment  that  declares  avoidance  of 
a  mark  shall  be  communicated  to  the  Patent  and  Trade  Mark 
Office  by  the  Judge  that  has  had  cognizance  of  the  case,  and  it 
shall  be  published  in  the  Gaceta  Oficial  de  Patentes  y  Marcas. 

CHAPTER  II 

PENALTIES 

ART.  18.  He  shall  be  punished  with  from  one  to  two  years 
of  imprisonment  and  a  fine  of  from  one  hundred  to  one  thousand 
pesos,  or  either  penalty,  that  places  upon  the  goods  that  he 
manufactures  or  sells  a  mark  already  registered  legally  in  favor 
of  another  person,  with  the  purpose  of  protecting  similar 
articles. 

He  shall  be  punished  with  the  same  penalty  that,  in  like 
manner  as  the  preceding  paragraph  stipulates,  shall  place  upon 
his  goods  a  mark  that  is  an  imitation  of  one  legally  registered, 
in  such  way  that,  at  first  sight,  it  be  mistaken  for  the  legal  one 
and  only  by  means  of  a  close  examination  can  the  one  be  distin- 
guished from  the  other. 

Like  penalty  shall  be  imposed  on  him  that  places  upon  his 
goods  a  mark  that,  although  legally  registered,  is  made  to  appear 
as  if  it  were  another,  through  any  addition,  deletion,  or 
alteration. 

ART.  19.  He  shall  be  punished  with  minor  detention  and 
fine  of  the  second  class,  or  either  penalty,  at  the  discretion  of 
the  Judge,  that,  without  being  the  author  of  the  acts  that  the 
preceding  article  enumerates,  deceitfully  sells,  places  on  sale 


MEXICO  593 

or  in  circulation,  goods  marked  in  the  manner  that  the  same 
article  sets  forth. 

ART.  20.  He  that,  without  committing  any  of  the  crimes 
that  the  two  preceding  articles  specify,  shall  make  use  of  a 
mark  wherewith — whether  by  its  simple  aspect  or  because  of 
the  legends  or  indications  that  accompany  it — he  may  deceive 
the  public  as  regards  the  origin  of  the  goods  on  which  the  said 
mark  has  been  affixed,  shall  incur  the  penalty  of  from  one  to 
two  years  in  prison  and  a  fine  of  from  one  hundred  to  one  thou- 
sand pesos,  or  either,  at  the  discretion  of  the  Judge. 

ART.  21.  He  that  deceitfully  sells,  offers  for  sale  or  puts 
in  circulation,  goods  stamped  with  a  mark  that  has  the  defects 
that  the  preceding  article  indicates,  shall  be  punished  with 
minor  detention  and  fine  of  the  second  class,  or  either,  at  the 
discretion  of  the  Judge. 

ART.  22.  When,  in  the  case  forseen  in  the  two  preceding 
articles,  the  mark  shall  have  been  registered  in  the  Patent  Office, 
such  circumstance  shall  be  regarded  as  an  offense  of  the  fourth 
class. 

ART.  23.  He  that  shall  place  or  affix  upon  his  goods  marks, 
labels,  etc.,  in  which  there  shall  be  made  false  indications, 
whether  it  be  in  an  open  or  insidious  manner,  as  regards  the 
nature  and  composition  of  the  objects  that  they  protect,  shall  be 
punished  with  from  one  to  two  years  of  imprisonment  and  a 
fine  of  the  second  class,  or  either,  at  the  discretion  of  the  Judge ; 
and  he  that,  deceitfully,  simply  sells,  places  on  sale  or  in  circu- 
lation, goods  thus  marked,  shall  incur  the  penalty  of  minor 
detention  and  fine  of  the  second  class. 

ART.  24.  He  that,  having  a  legally  registered  mark,  does 
not  place  thereon  the  legend  that  No.  Ill  of  Art.  9  stipulates, 
or  does  not  make,  in  its  case,  the  annotation  to  which  the  final 
part  of  Art.  14  refers,  shall  incur  the  penalty  of  minor  deten- 
tion and  fine  of  the  second  class,  or  either,  at  the  discretion  of 
the  Judge,  and  he  that  affixes  false  indications  shall  incur  the 
same  penalty  as  Art.  20  stipulates,  and  shall  also  find  himself 
included  in  the  case  forseen  by  Art.  22. 

ART.  25.  He  that  places  on  a  mark  the  indication  of  it 
being  registered  in  the  Patent  and  Trade  Mark  Office,  without 
this  being  the  case,  shall  incur  the  penalty  of  minor  detention 
and  fine  of  the  second  class,  or  either,  at  the  discretion  of  the 
Judge. 

ART.  26.  In  case  of  repetition,  there  shall  be  applied,  for 
the  first  time,  the  half,  in  addition  to  the  penalties  prescribed, 
and  for  each  new  case  of  repetition,  the  penalty  shall  be  in- 
creased with  an  additional  one-half,  successively. 


594  MEXICO 

That  person  is  a  repeater  that  has  committed  the  new  crime 
of  which  he  is  accused  before  there  shall  have  expired  five  years 
from  the  definitive  sentence  that  has  declared  him  culpable  for 
any  of  the  crimes  of  which  this  law  speaks,  and  even  though 
the  prior  crime  shall  have  referred  to  another  mark  different 
from  that  to  which  the  new  crime  refers. 

ART.  27.  Printers,  lithographers,  etc.,  that  make  counter- 
feit marks  for  those  that  make  undue  use  thereof,  and  any 
person  that  sells  or  places  them  on  sale  or  in  circulation,  shall 
be  considered  as  co-authors,  accomplices,  etc.,  as  the  case  may 
be,  according  to  their  respective  responsibility,  qualified  in 
accordance  with  the  principles  and  precepts  established  in  the 
Penal  Code  of  the  Federal  District. 

ART.  28.  Action  for  prosecuting  any  of  the  crimes  that 
the  preceding  articles  enumerate  shall  correspond  to  the  Public 
Minister  and  to  any  other  person  that  deems  himself  injured, 
and,  once  initiated,  the  case  shall  be  prosecuted  ex  officio  by 
all  means. 

ART.  29.  In  the  case  of  Arts.  18,  19,  and  27,  the  owner  of 
the  mark  legally  registered  shall  have,  in  addition,  the  right  of 
requiring  of  the  author  of  the  crime  indemnification  for  damages 
and  injuries. 

He  may,  likewise,  petition  that  all  the  products  be  adjudi- 
cated that  bear  the  illegal  mark,  whether  they  be  in  the  posses- 
sion of  the  person  that  is  designated  as  author  of  the  crime, 
or  in  the  possession  of  any  other  merchant,  commission  mer- 
chant, or  consignee;  however,  it  will  be  an  indispensable  requi- 
site for  this  right  being  possible  of  being  exercised  that  the 
owner  of  the  mark  shall  not  have  omitted  to  place  thereon  any 
of  the  legends  that  Art.  9  requires. 

The  owner  of  the  mark  shall  have  the  right,  likewise,  to 
there  being  delivered  to  him  all  the  marks,  instruments  of  the 
crime,  that  are  found  in  the  possession  of  the  author  of  the  crime 
or  of  his  accomplices,  and,  in  their  case,  that  there  be  also 
delivered  to  him  the  instruments  or  apparatus  especially  dedi- 
cated to  the  fabrication  of  the  said  marks. 

ART.  30.  In  addition  to  the  proviso  of  the  preceding  arti- 
cle, the  owner  of  the  mark  may  petition  the  Judge,  whether 
before  making  his  respective  demand,  or  during  the  hearing, 
for  the  assurance  of  the  objects  to  which  the  second  and  third 
paragraphs  of  the  same  article  refer,  and  name  on  his  own 
responsibility  a  trustee  therefor;  however,  the  indispensable 
requisites  for  carrying  into  eifect  the  said  assurance,  shall  be: 

I.  That  there  be  presented  the  certificate  of  the  Patent  and 
Trade  Mark  Office  that  evidences  that  the  mark  whereof  it  is  a 


MEXICO  595 

question  has  been  duly  registered ; 

II.  Evidence  by  means  of  the  corresponding  title,  duly  reg- 
istered in  the  same  Office,  that  the  petitioner  is  the  owner  of 
the  mark; 

III.  Verification  by  any  legal  means  of  the  corpus  delicti; 

IV.  That  there  be  furnished  sufficient  guaranty,  at  the  dis- 
cretion of  the  Judge. 

ART.  31.  The  procedure  in  accordance  with  the  preceding 
article  shall  be  carried  out  without  hearing  as  respects  the  party 
against  whom  it  is  aimed  and  under  the  sole  responsibility  of 
the  one  that  requests  the  same,  who  shall  stand  obligated  for 
payment  of  damages  and  injuries  to  the  defendant  that  may 
be  occasioned  thereby,  whether  corresponding  action  be  not 
brought  criminally  or  civilly  within  the  fifteen  days  following 
the  date  on  which  the  seizure  was  effected,  or  because  the  de- 
fendant shall  be  absolved,  or  the  suit  shall  be  dismissed. 

In  these  cases  order  shall  forthwith  be  given  to  undo  the 
assurance  to  which  the  preceding  article  refers. 

ART.  32.  The  Judge  that  has  cognizance  of  the  offenses 
of  which  the  preceding  articles  speak  shall  decide  also  regard- 
ing the  nullity,  forfeiture,  and  ownership  of  the  mark,  when 
these  are  alleged  in  defense  against  the  corresponding  criminal 
action,  and  the  respective  sentence  shall  be  notified  to  the  Pat- 
ent and  Trade  Mark  Office. 

ART.  33.  In  case  of  the  commission  of  any  of  the  offenses 
of  which  the  preceding  articles  speak,  in  which  the  owner  of 
the  legally  registered  mark  that  appears  improperly  used  or 
falsified  does  not  make  the  respective  complaint,  the  author  of 
the  offense  or  offenses  shall  forfeit  in  favor  of  the  correspond- 
ing Federal  Treasury  or  that  of  the  State  the  articles  that  shall 
have  been  distinguished  by  the  defective  or  illegal  mark;  and, 
in  their  turn,  the  marks  and  utensils  to  which  the  final  para- 
graph of  Art.  29  refers  shall  be  destroyed. 

ART.  34.  When  there  is  committed  an  offense  or  a  fault 
of  which  no  mention  is  made  in  this  law,  and  the  penalty  for 
which  is  indicated  in  the  Penal  Code  of  the  Federal  District, 
as  well  as  in  all  matters  relative  to  the  general  rules  regarding 
offenses  and  faults,  degrees  of  crime  with  intent,  cumulation, 
application  of  penalties,  criminal  and  civil  responsibility,  pro- 
vided that  the  present  law  indicates  no  special  procedure  con- 
cerning such  matters,  there  shall  be  observed  the  rules  of  the 
said  Penal  Code,  the  provisions  of  which  are  declared  obliga- 
tory throughout  the  Republic,  when  it  is  a  matter  of  marks,  in 
everything  that  is  not  modified  by  the  present  law. 

ART.  35.    The  Courts  of  the  Federation  are  authorized  to 


596  MEXICO 

take  cognizance  of  such  controversies  as  arise  by  reason  of  the 
present  law,  in  the  following  cases: 

I.  When  it  is  a  question  of  the  validity  or  nullity  of  the 
registration  of  a  mark,  or  it  is  claimed  that  the  Patent  and 
Trade  Mark  Office  had  no  authority  to  register  it  or  registered 
it  without  the  legal  requisites ; 

II.  When  there  are  announced  as  registered  those  marks 
that  are  not  such ; 

III.  In  any  other  case  in  which  the  Federation  shall  be  a 
party  or  the  Federal  interests  are  affected;  and 

IV.  When  it  is  a  question  of  acts  of  the  Patent  and  Trade 
Mark  Office  that  are  not  comprised  in  fraction  I  of  this  article. 

In  the  cases  of  which  fractions  I,  II,  and  IV  speak,  the 
Judges  of  the  District  of  the  City  of  Mexico  shall  have  juris- 
diction. 

In  the  cases  of  which  fraction  III  speaks  there  shall  be 
competent  the  District  Judges  with  whose  jurisdiction  there 
corresponds  the  domicile  of  the  defendant,  if  it  is  a  matter  of 
a  civil  action,  or  the  place  in  which  the  offense  was  committed, 
if  it  is  a  matter  of  a  criminal  action. 

ART.  36.  In  criminal  and  civil  controversies  that  arise  by 
reason  of  the  application  of  this  law,  but  in  which  there  is 
affected  only  the  interests  of  individuals,  the  Judges  competent 
for  taking  cognizance  thereof  and  deciding  them  shall  be  the 
corresponding  Judges  of  Common  Order,  in  accordance  with 
law. 

ART.  37.  The  provisions  of  the  preceding  articles  shall  not 
prevent  the  fulfillment  of  Art.  32  of  this  law,  in  the  cases  in 
which  that  proviso  is  applicable. 

ART.  38.  Any  civil  or  criminal  sentence  that  in  any  way 
is  related  with  the  marks  with  which  this  law  is  concerned, 
shall  be  communicated  to  the  Patent  and  Trade  Mark  Office; 
and  this  Office,  when  in  any  manner  the  said  sentence  modifies 
rights  relative  to  a  mark,  shall  have  it  published  in  the  Gaceta 
Oficial  and  shall  annotate  the  registration  of  the  mark  the  rights 
whereof  are  in  question. 

Notwithstanding  this,  order  may  be  given  to  publish  any 
other  sentence  relative  to  marks :  either  when  any  one  of  those 
interested  so  requests,  or  when  the  same  Office  deems  the  sen- 
tence of  sufficient  interest  to  be  published. 

CHAPTER  III 

PROCEDURE  FOR  OBTAINING  THE  REVOCATION  OP 

ADMINISTRATIVE  RESOLUTIONS 
ART.  39.    In  cases  in  which  those  interested  shall  not  be 


MEXICO  597 

satisfied  with  the  administrative  decisions  of  the  Secretariat 
of  Fomento  or  of  the  Patent  and  Trade  Mark  Office,  they  may 
appeal,  within  fifteen  days  after  being  advised  of  the  decision, 
to  any  of  the  District  Judges  of  the  City  of  Mexico,  setting 
forth  the  reasons  of  their  dissent. 

ART.  40.  If — the  term  to  which  the  preceding  article  refers 
having  expired — they  shall  not  have  done  so,  the  administrative 
decision  shall  stand. 

ART.  41.  Appeal  shall  be  made  by  presenting  an  instru- 
ment in  writing,  with  a  simple  copy  thereof,  which  shall  be  veri- 
fied by  the  Court. 

The  copy  of  the  instrument  shall  be  forwarded  within 
twenty-four  hours  to  the  Patent  Office  so  that  it  may  make 
report  within  eight  days. 

ART.  42.  As  soon  as  the  report  is  received,  copy  thereof 
and  of  the  appeal  shall  be  given  for  three  days  to  the  Public 
Ministry,  in  order  that  it  may  formulate  its  pleadings  as  defend- 
ant, in  representation  of  the  Secretariat  of  Fomento. 

ART.  43.  If  there  should  be  need  of  proofs,  there  shall  be 
fixed  a  term  that  shall  not  exceed  ten  days,  which  expired,  the 
trial  shall  be  called,  at  latest  within  three  days,  for  hearing  in 
which  the  Judge  shall  hear  the  allegations  of  the  parties,  and 
shall  decide  within  five  days,  whether  the  parties  interested 
shall  have  appeared  or  not. 

This  judgment  shall  be  appealable  from  both  rulings,  and 
appeal  shall  be  lodged  within  the  nonprorogable  term  of  five 
days. 

ART.  44.  If  there  shall  be  appeal  from  this  sentence,  the 
files  shall  be  forwarded  forthwith  to  the  Circuit  Court  that  has 
jurisdiction,  which,  with  only  one  hearing,  which  it  shall  fix,  at 
latest,  within  five  days,  shall  decide  within  eight  days,  deliver- 
ing a  copy  of  its  decision,  for  its  effects,  to  the  Patent  Office. 

ART.  45.  A  copy  of  the  definitive  decision  shall  be  for- 
warded to  the  authority  of  whose  decision  it  is  a  question. 

ART.  46.  If  the  sentence  shall  declare  the  opposition  of 
the  party  interested  as  unfounded  as  regards  the  administrative 
decision,  there  shall  be  imposed  upon  him  a  fine  of  from  five  to 
twenty  pesos. 

CHAPTER  IV 

PROCEDURE  IN  CIVIL  ACTIONS 

ART.  47.  Civil  actions  that  arise  out  of  the  present  law 
shall  be  tried  and  decided  summarily  by  means  of  the  procedure 
that  is  later  fixed,  save  the  dispositions  of  the  preceding  Chap- 
ter and  what  is  stipulated  for  criminal  actions. 


598  MEXICO 

ART.  48.  The  term  for  answering  the  demand  will  be  five 
days. 

ART.  49.  There  shall  not  be  admitted  questions  of  pre- 
liminary and  special  consideration  other  than  those  relative  to 
the  personality  of  any  of  the  litigants  and  the  jurisdiction  of 
the  Judge. 

ART.  50.  Lack  of  legal  capacity,  as  well  as  of  jurisdiction, 
may  be  alleged  up  to  three  days  before  the  time  set  for  answer- 
ing the  demand. 

ART.  51.  The  incident  of  legal  capacity  being  presented, 
which  shall  be  tried  at  the  same  hearing,  a  copy  thereof  shall 
be  given  to  the  opposing  party  for  three  days. 

ART.  52.  If  any  of  the  parties  shall  request  proof,  the 
Judge  shall  fix  a  term  that  in  no  case  shall  exceed  ten  days. 

ART.  53.  The  proofs  having  been  presented,  the  Judge 
shall  summon  the  parties  for  an  oral  hearing,  which  shall  take 
place  within  three  days,  to  the  end  that  they  may  set  forth 
therein  whatever  may  be  in  support  of  their  rights. 

ART.  54.  The  summons  for  hearing  will  serve  as  summons 
for  the  final  decision,  which  the  Judge  shall  render  within  three 
days,  whether  the  parties  shall  have  been  present  at  the  hear- 
ing or  not. 

ART.  55.  If  proof  shall  not  have  been  petitioned,  the  Judge 
shall  decide  solely  by  virtue  of  the  hearing. 

ART.  56.  The  question  of  lack  of  jurisdiction  having  been 
raised,  it  shall  be  substantiated  in  accordance  with  the  provi- 
sions of  the  Federal  or  local  Codes  of  Civil  Procedure,  accord- 
ing to  the  case. 

ART.  57.  Peremptory  exceptions  may  be  taken  on  answer- 
ing the  suit,  and  they  shall  be  decided  together  with  the  prin- 
cipal question. 

ART.  58.  Compensation  and  counterclaim  will  be  admitted 
only  when  the  action  on  which  they  are  based  shall  likewise  be 
subject  to  summary  procedure. 

ART.  59.  The  term  for  proof,  as  regards  the  principal 
question,  shall  be  twenty  days,  extensible  for  an  additional  fif- 
teen days,  at  the  discretion  of  the  Judge,  and  within  the  same 
there  may  be  alleged  and  proven  the  shortcomings  present  in 
witnesses  and  instruments. 

ART.  60.  In  case  any  of  the  parties  impeaches  a  document 
that  may  be  of  manifest  importance  in  the  suit,  there  shall  be 
followed  the  procedure  of  separate  deliberation,  without  sus- 
pending the  proceedings ;  however,  definitive  sentence  shall  not 
be  pronounced  in  the  principal  suit  until  the  said  question  shall 
have  been  decided  by  decision  definitive  in  effect. 


MEXICO  599 

AET.  61.  Should  any  of  the  documents  be  alleged  as  false, 
the  Judge  having  jurisdiction  in  the  procedure  shall  have  it 
removed,  leaving  in  place  a  certified  copy,  and  shall  forward 
it  to  the  Judge  of  the  Criminal  or  District  Court,  as  may  be 
proper,  signing  same  together  with  the  Clerk,  or  witnesses  in 
attendance,  according  to  the  case. 

If  the  Judge  that  has  cognizance  of  the  principal  action 
exercises  combined  jurisdiction,  he  shall  have  the  document  re- 
moved, proceeding  separately  in  the  criminal  action  that  cor- 
responds. 

ART.  62.  In  the  first  case,  before  making  remittance  to  the 
competent  Judge,  and  before  the  initiation  of  the  criminal  pro- 
cedure in  the  second  case  of  the  same  article,  request  shall  be 
made  of  the  party  that  has  presented  the  document  that  is 
alleged  as  false,  to  the  end  that  he  shall  state  whether  he  desires 
that  it  be  taken  into  consideration  or  not ;  if  he  insists  on  having 
it  validated,  the  action  shall  be  suspended  in  whatever  stage 
it  may  be  until  definitive  decision  be  taken  on  the  question  of 
falsity;  and,  if  he  does  not  insist  that  said  document  be  taken 
into  consideration,  the  remission  of  the  same  to  the  competent 
Judge  shall  be  effected,  or  there  shall  take  place  the  removal 
for  initiating  the  respective  criminal  procedure,  without  sus- 
pending the  course  of  the  civil  hearing. 

ART.  63.  There  having  expired  the  delay  for  proof  or  exten- 
sion, whichever  the  case  may  be,  order  shall  forthwith  be  given 
for  the  publication  of  the  evidence,  the  parties  being  given 
access  to  the  proceedings  for  three  days,  for  each  one,  so  that 
they  may  make  their  allegations  in  a  hearing  that  shall  be  held, 
at  latest,  within  three  days. 

In  rulings,  appeal  may  be  lodged  within  the  unextensible 
term  of  three  days;  and  on  sentence,  within  the  term,  likewise 
unextensible,  of  five  days. 

ART.  64.  On  conclusion  of  the  hearing,  summons  shall  be 
issued  for  the  sentence,  which  shall  be  pronounced  within  the 
following  five  days. 

ART.  65.  Rulings  and  sentences  that  are  pronounced  in 
this  class  of  proceedings  are  appealable  solely  to  a  restituitive 
end. 

CHAPTER  V 

PROCEDURE  IN  ACTIONS  OF  A  CRIMINAL  CHARACTER 

ART.  66.     Criminal  actions  that  are  instituted  in  accordance 

with  the  present  law,  if  they  are  brought  before  the  Federal 

Judges  in  cases  of  their  jurisdiction,  shall  be  tried  in  the  same 

manner  as  other  criminal  actions,  until  the  Code  of  Federal 


600  MEXICO 

Procedure  in  Criminal  Matters  is  issued. 

ART.  67.  When  those  same  actions  have  to  be  brought 
before  the  local  Judges  of  the  Federal  District,  of  the  States  or 
Territories,  in  accordance  with  Art.  97  of  the  Constitution  and 
with  the  present  law,  the  procedure  shall  be  that  in  force  accord- 
ing to  the  laws  of  each  one  of  those  localities. 

ART.  68.  The  civil  action  emanating  from  the  criminal 
action  that  this  law  establishes  may  be  brought  at  the  same 
time  and  before  the  same  court  that  has  cognizance  of  the  crim- 
inal action;  however,  if  the  civil  suit  reaches  the  point  of  a 
decision  before  the  criminal  action  is  concluded,  the  civil  case 
shall  be  suspended  until  the  criminal  action  is  found  in  the  same 
stage,  to  the  end  that  both  may  be  decided  in  the  same  sentence. 

ART.  69.  If,  through  the  civil  suit  not  being  yet  in  condi- 
tion for  sentence,  it  shall  not  be  possible  to  render  decision  in 
its  regard  at  the  same  time  as  with  reference  to  the  criminal 
action,  the  Civil  Judge  that  the  plaintiff  elects  shall  hear  and 
decide  it  in  the  future,  unless  the  one  that  has  had  cognizance 
of  the  criminal  case  exercises  combined  jurisdiction. 

ART.  70.  Civil  action  may  be  separately  lodged  and  prose- 
cuted before  the  Tribunal  that  has  jurisdiction: 

I.  When  sentences  shall  have  been  definitively  rendered  in 
the  criminal  action,  without  the  civil  action  having  been  brought 
opportunely  in  the  criminal  trial ; 

II.  When  the  accused  shall  have  died  before  the  criminal 
action  shall  have  been  brought ; 

III.  When  the  criminal  action  shall  have  become  outlawed 
and  the  civil  action  is  not  yet  outlawed. 

ART.  71.  When  the  party  interested  shall  have  brought 
action  civilly  in  a  criminal  suit,  the  matter  shall  be  tried  in 
accordance  with  Arts.  47  and  following. 

ART.  72.  If  the  criminal  action  is  prosecuted  before  the 
local  Courts,  the  civil  action  shall  be  tried  in  the  manner  pro- 
vided for  in  the  corresponding  local  legislation. 

CHAPTER  VI 

COMMERCIAL  NAMES  AND  ADVERTISEMENTS 
ART.  73.  The  owner  of  a  commercial  name  shall  have  the 
exclusive  right  to  use  it  without  need  of  registering  it  or  of  any 
other  requisite ;  and,  to  exercise  this  right,  he  shall  have,  against 
any  person  that  usurps  or  imitates  it,  the  right  of  civil  action 
to  the  end  of  having  the  usurpation  or  imitation  stopped,  and 
of  demanding  damages  and  injuries,  and  criminal  action,  to  the 
end  that  the  guilty  party  be  punished. 

ART.  74.    Despite  the  proviso  in  the  preceding  article,  any 


MEXICO  601 

merchant — whether  he  be  national  or  foreign — shall  have  the 
right  of  having  his  commercial  name  published  in  the  Gaceta 
Oficial  de  Patentee  y  Marcas,  with  the  end  of  obtaining  the  pre- 
rogative that  Art.  77  establishes.  To  conserve  this  prerogative 
it  shall  be  necessary  to  renew  the  publication  every  ten  years. 

ART.  75.  He  that  in  any  way  shall  use  a  commercial  name 
that  does  not  belong  to  him  shall  incur  the  penalty  of  minor 
detention  and  fine  of  the  second  class,  or  either,  in  the  discre- 
tion of  the  Judge. 

He  that  shall  imitate  a  commercial  name  in  such  way  that 
it  may  cause  confusion  shall  suffer  a  like  penalty. 

ART.  76.  The  penalties  imposed  in  the  preceding  article 
are  without  prejudice  to  those  that  are  imposed  for  the  same 
act  when  the  commercial  name  unlawfully  used  is  made  to 
appear  accompanying  a  mark  and  forming  part  thereof,  pro- 
vided that  the  use  of  the  mark  constitutes  an  offense  in  accord- 
ance with  this  law ;  since,  in  that  case,  there  will  be  applied  the 
rules  of  accumulation  stipulated  by  the  Penal  Code  of  the 
Federal  District. 

ART.  77.  To  the  end  that  the  penalties  that  Art.  75  estab- 
lishes may  be  imposed,  it  will  be  an  indispensable  requisite  that 
the  plaintiff  prove  that  there  was  fraud  on  the  part  of  the 
accused.  Despite  this,  the  merchant  that  shall  have  had  his 
commercial  name  published  in  the  Gaceta  Oficial  de  Patentes  y 
Marcas,  in  accordance  with  the  proviso  of  Art.  74,  shall  be 
exempt  from  such  requirement,  and  the  legal  presumption  will 
be  that  the  accused  acted  with  fraudulent  intent. 

ART.  78.  Criminal  action  and  action  for  damages  and  in- 
juries, to  which  Art.  73  refers,  shall  pertain  likewise  to  a  third 
party  that  shall  have  suffered  injuries  by  reason  of  the  usurpa- 
tion or  imitation  of  a  commercial  name. 

ART.  79.  Any  person  that,  for  announcing  to  the  public 
a  line  of  business,  a  factory,  negotiation,  or  goods,  shall  make 
use  of  advertisements  that  through  any  circumstance  shall  have 
a  certain  originality  that  distinguishes  them  easily  from  among 
those  of  their  kind,  may  acquire  the  exclusive  right  to  continue 
using  them  and  of  preventing  other  persons  from  making  use 
of  like  or  similar  advertisements,  to  such  a  degree  that  they 
may  be  confused  as  a  whole  and  at  first  sight,  this  being  subject, 
respectively,  to  the  same  requisites  that  the  present  law  estab- 
lishes for  the  registration  of  marks. 

ART.  80.  For  "commercial  advertisements"  the  effects  of 
registration  shall  be  for  from  five  to  ten  years,  at  the  will  of 
the  party  interested,  and  the  respective  terms  once  ended,  the 
"commercial  advertisements"  shall,  ipso  facto,  become  of  publio 


602  MEXICO 

domain.  Before  any  of  these  terms  shall  terminate,  the  party 
interested  shall  have  the  right  to  have  the  effects  of  registration 
extended  for  another  five  or  ten  years,  at  the  will  of  the  peti- 
tioner, and  such  right  may  be  exercised  indefinitely. 

These  extensions  shall  be  published  in  the  Gaceta  Oficial  de 
Patentes  y  Marcas. 

ART.  81.  The  owner  of  a  " commercial  advertisement,"  so 
registered,  shall  have  the  right  of  civil  action  for  preventing 
the  continuation  of  the  use  of  the  usurped  or  imitated  "adver- 
tisement" and  demanding  damages  and  injuries,  as  well  as 
criminal  action  for  punishing  the  offender. 

ART.  82.  He  that  usurps  or  imitates  a  registered  "com- 
mercial advertisement"  shall  incur  the  penalty  of  minor  deten- 
tion and  fine  of  the  first  class,  or  either,  at  the  discretion  of  the 
Judge;  however,  if  the  form  of  the  advertisement  coincides 
with  that  of  a  mark  also  registered,  the  author  of  the  usurpation 
or  imitation  shall  be  punished  as  if  it  were  a  matter  of  the 
offense  of  usurpation  or  imitation  of  marks. 

ART.  83.  Printers,  lithographers,  etc.,  that  make  counter- 
feit "commercial  advertisements"  that  are  improperly  used, 
and  any  person  that  sells  or  puts  them  on  sale  or  in  circulation, 
shall  be  regarded  as  co-authors,  accomplices,  etc.,  as  shall  cor- 
respond to  them  in  accordance  with  their  respective  responsi- 
bility, qualified  according  to  the  principles  and  precepts  estab- 
lished by  the  Penal  Code  of  the  Federal  District. 

ART.  84.  The  provisions  of  Chapters  III,  IV,  and  V,  are 
applicable  as  far  as  they  have  to  do  with  commercial  names  and 
advertisements. 

CHAPTER  VII 

OFFICIAL  FEES 

ART.  85.  There  shall  be  charged  a  fee  of  five  pesos  for  the 
registration  or  prolongation  of  a  mark. 

For  the  publication  of  a  commercial  name  there  shall  be 
paid  one  peso. 

For  the  registration  of  a  "commercial  advertisement" 
there  shall  be  paid: 

Two  pesos,  if  it  is  for  five  years ; 

Four  pesos,  if  it  is  for  ten  years ; 

Four  pesos  for  each  prolongation  of  five  years. 

These  fees  shall  be  paid  in  stamps  of  the  Federal  Stamp 
Revenues,  in  the  form  and  in  the  manner  that  the  Regulation 
of  this  law  stipulates. 

The  Regulation  will  specify  those  that  shall  be  occasioned 
for  other  services  of  the  Patent  and  Trade  Mark  Office,  such 


MEXICO  603 

as  registrations  of  transfer,  change  of  location,  renewal  of  cer- 
tificates of  registration,  etc.,  which  likewise  shall  be  paid  in 
stamps  of  the  Federal  Stamp  Revenues. 

CHAPTER  VIII 

TRANSITORY  PROVISIONS 

ART.  86.  This  law  shall  commence  to  be  effective  on  the 
first  day  of  October  of  the  present  year. 

ART.  87.  Marks  that  shall  have  been  registered  up  to  the 
present  date  shall  conserve  all  legal  force  and  validity  in  accord- 
ance with  the  law  until  now  in  force;  however,  to  the  end  that 
their  respective  owners  may  avail  themselves  of  the  criminal 
actions  that  this  law  concedes,  it  will  be  an  indispensable  requi- 
site that  every  twenty  years,  counting  from  the  date  on  which 
this  law  is  declared  operative,  there  be  effected  the  renewal  of 
the  respective  registrations,  as  is  provided  for  in  Art.  6. 

ART.  88.  The  registrations  of  marks  that  shall  have  been 
pending  due  to  the  respective  procedure  being  carried  through 
and  against  which  no  opposition  has  been  formulated,  shall  be 
subject  to  no  further  opposition,  and  the  marks  shall  be  regis- 
tered forthwith  in  accordance  with  what  the  law  until  now  in 
force  provides. 

To  this  effect,  there  shall  be  granted  to  those  interested  a 
term  of  two  months,  counting  from  the  date  on  which  this  law 
commences  to  be  of  effect,  to  the  end  that  they  may  satisfy  the 
corresponding  Government  fee,  subject  to  the  collection  of  which 
— if  they  shall  not  so  effect  it — the  files  that  concern  such  case 
shall  be  archived,  and  the  respective  applications  shall  be  con- 
sidered as  if  they  had  not  been  presented. 

ART.  89.  The  procedure  of  marks  that  shall  have  been 
pending  due  to  there  having  been  lodged  any  opposition  thereto, 
shall  be  prosecuted  in  accordance  with  the  precepts  of  the  law 
until  now  effective;  however,  once  the  opposition  having  been 
decided  in  a  definitive  manner  in  favor  of  the  applicant,  either 
through  judicial  sentence  or  by  compromise  or  arrangement 
between  the  applicant  and  the  opposer,  the  procedure  shall  be 
followed  in  accordance  with  the  proviso  of  the  preceding  article, 
with  the  understanding  that  the  term  of  two  months — to  which 
the  same  article  refers — shall  be  counted  in  the  present  case 
from  the  date  on  which  the  applicant  shall  have  been  legally 
notified  of  the  respective  final  sentence,  or  from  the  date  of  the 
compromise  or  arrangement. 

ART.  90.  The  registration  of  marks  that  shall  be  pending 
only  from  the  payment  of  the  respective  fee,  shall  be  proceeded 
with  in  accordance  with  what  the  law  in  force  provides,  and 


604  MEXICO 

there  shall  be  applicable  to  said  registration  the  proviso  of 
transitory  Art.  87. 

ART.  91.  From  the  date  on  which  this  law  commences  to 
become  effective,  there  shall  no  longer  be  applicable  as  to  the 
registration  of  marks  in  the  Register  of  Commerce  the  proviso 
in  paragraph  1  of  Art.  26  of  the  Code  of  Commerce ;  and  there 
is  fixed  a  term  of  nine  months  which  cannot  be  extended,  count- 
ing from  the  same  date,  so  that  marks  that  are  registered  in 
accordance  with  what  is  provided  in  No.  Ill  of  Art.  21  of  the 
same  Code  may  be  presented  for  their  registration  in  the  Patent 
Office,  with  the  understanding  that,  if  such  shall  not  be  so  car- 
ried out,  the  registrations  made  in  said  Office  will  be  considered 
as  preferential  as  respects  those  effected  in  the  Register  of 
Commerce,  even  though  these  latter  may  be  anterior,  as  respects 
date,  to  the  former  mentioned. 

ART.  92.  There  are  repealed  Arts.  700,  701,  702,  and  708 
of  the  Penal  Code  of  the  Federal  District,  in  so  far  as  concerns 
their  applicability  to  offenses  concerning  marks  of  which  the 
present  law  speaks. 

ART.  93.  There  is  repealed  the  Law  of  November  28,  1889, 
and  its  Amendment  of  December  17,  1897,  and  any  other  pro- 
vision that  shall  not  be  in  accordance  with  the  precepts  of  the 
present  law. 

Likewise  there  is  repealed  No.  XVI  of  Art.  1  of  the  Law 
of  Federal  Revenues. 

Therefore,  I  order  that  it  be  printed,  published,  circulated, 
and  full  effectiveness  be  given  thereto. 


MOROCCO  (FRENCH  ZONE) 

DECREE  RELATIVE  TO  THE  PROTECTION  OP  INDUS- 
TRIAL PROPERTY*  OF  JUNE  23,  1916 

HEADING  V 
MARKS  OF  MANUFACTURE  AND  OF  COMMERCE 

CHAP.  I 

General 

ARTICLE  72.  A  mark  of  manufacture  or  commerce  is  op- 
tional. 

However,  ordinances  of  Our  Grand  Vizir  may  exceptionally 
declare  such  obligatory  for  products  that  they  shall  determine. 

ART.  73.  Names  under  a  distinctive  form,  denominations, 
imprints,  stamps,  seals,  vignettes,  reliefs,  letters,  ciphers,  en- 
velopes, indications  of  origin,  and  any  other  signs  serving  to 
distinguish  the  products  of  a  factory  or  an  industry,  an  agricul- 
tural, timber,  or  extractive  exploitation,  or  the  objects  of  com- 
merce, shall  be  considered  marks  of  manufacture  or  commerce. 

ART.  74.  Regularly  constituted  associations  or  syndicates 
may  have  a  collective  mark  of  manufacture  or  commerce  which 
their  members  shall  be  permitted  to  affix  upon  the  products  of 
their  industry  or  of  their  agricultural,  timber,  or  extractive 
exploitation,  and  upon  the  objects  of  their  commerce. 

ART.  75.  The  national  Moroccan,  French,  or  foreign  deco- 
rations, all  emblems  of  the  same  appearance,  images  or  words 
contrary  to  public  order  or  to  good  morals,  may  not  form  part 
of  a  mark  nor  be  admitted  to  deposit. 

ART.  76.  The  use  of  public  arms,  insignia,  or  decorations 
that  shall  not  have  been  authorized  by  the  competent  authorities, 
or  the  employment  of  the  official  signs  or  stamps  of  control  or 
guarantee  adopted  in  Morocco  or  in  any  country  forming  part 
of  the  International  Union,  may  be  considered  as  contrary  to 
public  order  in  the  sense  of  Art.  74. 

However,  marks  that  contain  the  reproduction  of  public 
arms,  decorations,  or  insignia,  with  the  authorization  of  the 
competent  authorities,  shall  not  be  considered  as  contrary  to 
public  order. 

A  mark  may  not  be  considered  as  contrary  to  public  order 
for  the  sole  reason  that  it  is  not  in  agreement  with  some  pro- 

*  Provisions  not  relating  to  trade  marks  are  omitted. 


606         MOROCCO  (FRENCH  ZONE) 

vision  of  the  trade  mark  legislation  in  the  country  of  origin, 
save  the  case  in  which  this  provision  itself  concerns  public  order. 

ART.  77.  The  nature  of  the  product  or  object  for  which 
the  mark  is  intended  may  in  no  case  operate  against  the  deposit 
and  the  validity  of  this  mark. 

ART.  78.  Every  mark  of  manufacture  or  of  commerce 
regularly  registered  abroad  in  a  country  forming  part  of  the 
International  Union  will  be  admitted  to  deposit  and  protected 
without  variation  in  the  French  Zone  of  the  Cherifian  Empire. 

However,  the  following  may  be  invalidated : 

1)  Marks  that  are  of  a  nature  to  infringe  upon  the  rights 
acquired  by  third  parties  in  the  French  Zone  of  the  Cherifian 
Empire ; 

2)  Marks  destitute  of  any  distinctive  character,  or  com- 
posed exclusively  of  signs  or  indications  capable  of  serving  in 
commerce  to  designate  the  kind,  quality,  quantity,  destination, 
value,  place  of  origin  of  the  products,  or  the  time  of  produc- 
tion, or  become  common  in  current  language,  or  in  the  ordinary 
and  usual  customs  of  trade  in  the  French  Zone  of  the  Cherifian 
Empire.    In  the  estimation  of  the  distinctive  character  of  a 
mark,  account  shall  be  taken  of  all  circumstances  of  fact,  par- 
ticularly of  the  duration  of  use  of  the  mark; 

3)  Marks  that  are  contrary  to  morals  or  to  public  order. 
ART.  79.     The  country  in  which  the  depositor  has  his  prin- 
cipal establishment  shall  be  considered  the  country  of  origin. 

If  this  principal  establishment  is  not  situated  in  one  of 
the  countries  of  the  International  Union,  that  to  which  the 
depositor  belongs  shall  be  considered  as  the  country  of  origin. 

CHAP.  II 

Deposit.     Priority  of  Use.     Term.     Formalities.     Fees 
ART.  80.    No  one  may  claim  the  exclusive  ownership  of  a 
mark  unless  he  has  effected  the  deposit  with  the  Moroccan  Office 
of  Industrial  Property  according  to  the  conditions  determined 
by  the  following  articles. 

ART.  81.  In  default  of  the  deposit  of  a  mark,  the  priority 
of  use  of  this  mark  may  be  established  only  by  literal  proof, 
that  is  to  say,  by  printed  matter  or  contemporary  documents 
concerning  the  facts  of  use  that  they  tend  to  establish. 

ART.  82.  When  a  regularly  deposited  distinctive  sign  has 
been  employed  publicly  and  continuously  in  Morocco  or  abroad 
for  at  least  five  years  without  any  recognized  action  resulting, 
the  exclusive  ownership  of  this  sign  may  no  longer  be  con- 
tested, by  right  of  priority  of  use,  against  the  first  depositor, 
unless  it  is  established  that  at  the  time  of  the  deposit  the  de- 


MOROCCO  (FRENCH  ZONE)         607 

positor  could  not  be  ignorant  of  the  mark  of  the  first  user. 

A  third  party  that  proves,  in  accordance  with  the  condi- 
tions indicated  in  the  present  article,  the  prior  and  continuous 
use,  as  a  mark,  of  the  distinctive  sign  so  deposited,  may  continue 
this  use  for  ten  years,  counting  from  the  notification  to  be  made 
to  him  of  the  deposit  by  the  depositor.  This  right  of  use  may 
be  transferred  along  with  the  capital  of  the  business. 

He  is  authorized,  in  order  to  safeguard  this  possession,  to 
bring  action,  should  there  be  occasion,  for  unfair  or  illegal 
competition. 

ART.  83.  The  deposit  shall  be  effective  for  twenty  years 
only. 

The  ownership  of  the  mark  may  always  be  preserved  for 
a  new  term  of  twenty  years  by  virtue  of  a  new  deposit,  which 
may  be  renewable  indefinitely. 

In  case  of  assignment  of  the  establishment  or  even  simply 
of  the  mark,  with  or  without  its  goodwill,  the  transfer  of  the 
mark  must  be  effected  according  to  the  terms  that  shall  be 
determined  by  the  regulatory  order  provided  for  by  Art.  84 
of  the  present  Dahir.  This  transfer  may  be  renewed  for  a  term 
of  twenty  years. 

ART.  84.  In  default  of  the  effective  use  of  the  mark  in 
Morocco  or  abroad,  and  when  the  author  of  the  deposit  does 
not  justify  the  reasons  of  non-use,  the  avoidance  of  the  deposit 
may  be  pronounced  at  the  request  of  the  Public  Minister  or  of 
any  party  interested. 

ART.  85.    The  deposit  comprises: 

1)  An  application  addressed  to  the  Resident  Commissioner 
General  of  France  in  Morocco  (Direction  of  Agriculture  and 
Commerce,  Service  of  Economic  Studies) ; 

2)  Two  facsimiles  of  the  design  of  the  mark; 

3)  The  cliche  of  this  mark; 

4)  For  marks  already  registered  abroad  and  which  are  the 
subject  matter  of  Art.  78,  above,  a  regular  certificate  of  regis- 
tration in  the  country  of  origin  delivered  by  the  competent 
authority. 

ART.  86.  The  deposit  and  transfer  of  marks  shall  be  made 
for  each  class  of  products  or  objects  for  which  the  said  marks 
are  intended,  on  payment  of  the  fees  destined  to  satisfy  the 
expenses  occasioned  by  the  application  of  the  present  Dahir. 

The  regulatory  order  provided  for  by  Art.  87,  following, 
shall  determine  the  amount  and  the  conditions  of  payment  of 
these  fees  that  are  to  be  collected  by  the  Office  of  the  Secretary 
of  the  Moroccan  Office  of  Industrial  Property  for  the  service 
of  the  said  Office. 


608         MOROCCO  (FRENCH  ZONE) 

ART.  87.  An  order  of  Our  Grand  Vizir  shall  determine 
the  measures  necessary  for  the  execution  of  the  present  Dahir 
and  particularly:  the  formalities  to  be  fulfilled  for  the  deposit, 
transfer,  and  publicity  of  marks  of  manufacture  and  commerce ; 
the  conditions  concerning  the  delivery  to  those  interested  of 
the  deed  proving  the  deposit  effected  by  them;  the  procedure 
to  be  followed  for  the  rejection  of  applications  for  the  deposit 
of  illegal  marks  that  shall  be  pronounced  by  residential  order; 
the  amount  of  the  fees  appertaining  to  the  deposit  and  transfer 
of  marks,  their  mode  of  collection  and  the  conditions  of  delivery 
to  the  depositors  of  the  receipts  for  payments. 

HEADING  VI 

COMMERCIAL  NAMES 

ART.  88.  Commercial  names  shall  be  protected,  whether 
they  form  part  of  a  mark  of  manufacture  or  of  commerce  or  not. 

Furthermore,  the  provisions  of  Our  Dahir  constituting  the 
Code  of  Commerce,  as  concerns  the  inscription  in  the  Register 
of  Commerce  of  names  and  firms  relating  either  to  individuals 
or  to  commercial  associations,  is  in  no  wise  derogated. 

HEADING  VII 

UNFAIR  TRADE 
ART.  89.    Unfair  trade  consists  in : 

1)  Infractions  of  the  provisions  of  the  present  Dahir,  when 
the  acts  alleged  are  lacking  in  one  of  the  elements  susceptible 
of  subjecting  them  to  the  penalties  that  are  the  subject  of  Head- 
ing X,  following; 

2)  Acts  comprised  in  Art.  84  of  Our  Dahir  constituting  the 
Code  of  Obligations  and  Contracts. 

ART.  90.  This  enumeration  is  not  limitative,  and  the  courts 
shall  have  peremptory  jurisdiction  over  facts  that  shall  be 
brought  before  them  as  susceptible  of  constituting  unfair  trade. 

The  principles  presented  in  Arts.  77  to  106  of  Our  Dahir 
constituting  the  Code  of  Obligations  and  Contracts  are  in  no 
wise  derogated. 

ART.  91.  Acts  of  unfair  trade  may  only  result  in  an  action 
for  cessation  from  the  acts  that  constitute  it  and  indemnity. 

HEADING  VIII 

PROTECTION  IN  EXPOSITIONS  AND  INDUSTRIAL  RECOMPENSES 

CHAP.  I 

Temporary  Protection.    Object  and  Extent 
ART.  92.    A  temporary  protection  shall  be  granted  ...  to 


MOROCCO  (FRENCH  ZONE)         609 

marks  of  manufacture  or  of  commerce,  for  products  that  shall 
be  regularly  entered  in  official  or  officially  recognized  foreign 
international  expositions. 

ART.  93.  This  protection,  whose  duration  is  fixed  at  twelve 
months,  counting  from  the  official  opening  of  the  exposition, 
will  have  the  effect  of  maintaining  for  exhibitors  or  their  as- 
signs, subject  to  the  following  conditions,  the  right  to  claim 
during  this  term  the  protection  of  which  their  .  .  .  marks  may 
legally  be  susceptible. 

ART.  94.  The  duration  of  the  temporary  protection  shall 
not  be  extended,  nor  that  of  the  delays  provided  for  by  Art.  4 
of  the  International  Convention  of  Paris  of  March  20,  1883, 
revised  at  Brussels  on  December  14,  1900,  and  at  Washington 
on  June  2,  1911,  nor  of  those  fixed  by  Arts.  12  and  following  of 
the  present  Ddhir. 

ART.  95.  Exhibitors  that  shall  desire  to  avail  themselves 
of  the  temporary  protection  shall  have  delivered  to  themselves, 
by  the  authority  charged  with  officially  representing  Morocco 
at  the  exposition,  a  certificate  of  guarantee  which  shall  show 
that  the  object  for  which  protection  is  applied  for  is  really 
exhibited. 

The  application  for  the  said  certificate  shall  be  made  dur- 
ing the  course  of  the  exposition  and,  at  latest,  within  the  first 
three  months  from  the  opening  of  the  exposition;  it  shall  be 
accompanied  by  an  exact  description  of  the  object  to  be  guaran- 
teed, and,  should  there  be  required,  of  the  drawings  of  said 
object. 

Applications  shall  be  entered  in  a  special  Register  which 
shall  be  forwarded  along  with  the  said  applications  and  the 
accompanying  papers  to  the  Resident  Commissioner  General 
of  France  in  Morocco  (Direction  of  Agriculture  and  Commerce, 
Service  of  Economic  Studies),  immediately  on  the  official  closing 
of  the  exposition,  and  communicated  without  expense  on  request 
under  the  supervision  of  the  Moroccan  Office  of  Industrial 
Property. 

ART.  96.  An  order  of  Our  Grand  Vizir  will  determine,  on 
the  occasion  of  each  exposition  presenting  the  characteristics 
noted  in  Art.  92,  the  measures  necessary  for  the  application  of 
the  preceding  article. 

ART.  97.  The  same  protection  shall  be  granted  to  ... 
marks  of  manufacture  and  of  commerce  for  products  that  shall 
be  regularly  entered  at  expositions  organized  in  Morocco  with 
the  authorization  of  the  Administration  or  under  its  patronage. 

ART.  98.  An  order  of  Our  Grand  Vizir  will  determine  the 
measures  necessary  for  the  application  of  the  preceding  article. 


610  MOROCCO  (FRENCH  ZONE) 

CHAP.  II 

Industrial  Recompenses.    Use  and  Guarantee 
AST.  99.    Reaompenses,  the  subject  of  the  present  chapter, 
comprise  prizes,  medals,  mentions,  deeds  or  attestations  of  what- 
ever nature  concerning  superiority  or  approval  that  has  been: 

1)  Obtained    in    expositions    or    organized    competitions, 
patronized  or  authorized  by  the  Government  of  Our  Cherifian 
Empire ; 

2)  Obtained  abroad  in  expositions  or  organized  competi- 
tions patronized  or  organized  by  a  foreign  Government; 

3)  Awarded  in  Morocco  by  established  bodies,  public  estab- 
lishments, Moroccan  or  foreign  associations  or  societies. 

Industrial  or  commercial  use  of  these  recompenses  may  be 
made  only  upon  and  after  the  fulfillment  of  the  formalities 
hereinafter  prescribed. 

ART.  100.  The  industrial  or  commercial  use  of  the  recom- 
penses enumerated  in  Art.  99  is  allowable  only  after  registra- 
tion at  the  Moroccan  Office  of  Industrial  Property  of  the  official 
list  of  awards,  either  at  the  request  of  the  authority  that  has 
organized  the  exposition  or  the  competition,  or  of  the  holder  of 
one  of  these  recompenses  included  in  the  said  list,  or  of  the 
diploma,  certificate  or  their  certified  copies  corresponding  to 
the  petition  of  the  holder  interested. 

The  registration  allows  of  inscription  by  the  Moroccan 
Office  on  the  diploma,  certificate,  or  their  copies,  of  the  date  of 
the  deposit  and  of  a  serial  number.  Mention  of  the  registration 
is  entered  in  a  special  Register. 

Every  application  for  the  registration  of  a  list  of  awards 
must  be  accompanied  by  two  facsimiles  of  these  awards;  one 
of  them  shall  be  returned  to  the  authority  that  has  organized 
the  exposition  or  the  competition,  or  to  the  party  interested, 
provided  with  the  mentions  specified  in  the  preceding  para- 
graph ;  the  other  shall  be  preserved  in  the  archives  of  the  Moroc- 
can Office. 

Registration  is  legal  as  to  recompenses  awarded  in  exposi- 
tions or  competitions  organized,  patronized,  or  authorized  by 
Our  Government  or  by  a  foreign  Government. 

In  any  other  case  the  registration  shall  be  effected  only 
after  investigation  by  the  Moroccan  Office. 

Registered  recompenses  shall  be  published  in  the  Bulletin 
Officiel  of  the  Protectorate. 

Diplomatic  conventions  concluded  with  countries  that  have 
instituted  a  procedure  for  registration  may  excuse  recompenses 
obtained  and  previously  registered  in  these  countries  from  regis- 


MOEOCCO  (FRENCH  ZONE)         611 

tration  in  Morocco  on  condition  that  the  same  dispensation  from 
registration  be  accorded  to  the  holders  of  recompenses  awarded 
and  registered  in  Morocco,  and  that  there  be  an  exchange  of 
documents  in  evidence  of  the  registration. 

ART.  101.  Recompenses,  the  subject  of  the  present  chapter, 
shall  be  awarded  by  personal  or  individual  title  or  by  collec- 
tive title. 

When  the  recompense  has  been  awarded  by  personal  or 
individual  title,  industrial  or  commercial  use  may  be  made 
thereof,  either  by  the  group  interested  or  by  each  of  the  mem- 
bers of  this  group,  on  condition  of  expressly  mentioning,  and 
in  characters  as  legible  as  those  of  the  recompense  itself,  the 
collectivity  that  has  obtained  it. 

Industrial  or  commercial  use  may  be  made  of  a  recompense 
attributed  to  an  industrial  or  commercial  enterprise  only  by  the 
proprietor  of  this  enterprise  or  by  his  assigns. 

Industrial  or  commercial  use  may  be  made  of  a  recompense 
attributed  by  title  of  collaborator  only  on  condition,  by  the 
holder,  of  indicating  that  it  is  a  collaborator's  recompense,  and 
of  mentioning  the  name  of  the  enterprise  with  which  he  was 
affiliated  when  he  obtained  it.  The  proprietor  of  the  enterprise 
may  likewise  make  use  thereof  only  on  condition  of  indicating 
that  it  is  a  matter  of  a  collaborator's  recompense. 

When  a  recompense  has  been  awarded  in  view  of  a  deter- 
mined product,  the  industrial  or  commercial  use  thereof  may 
be  assigned  at  the  same  time  as  the  product. 

Every  assignment  or  transfer  of  commercial  capital  or  of 
a  product  including  the  recompenses  attributed  to  the  prior 
owners  must  be  declared  at  the  Moroccan  Office  of  Industrial 
Property;  in  default  of  this  declaration,  the  successor  may  not 
make  legal  use  of  the  recompenses  attributed  to  his  predecessor 
or  predecessors  and  regularly  registered. 

ART.  102.  The  industrial  or  commercial  use  of  a  recom- 
pense carries  the  obligation  of  indicating  the  nature  of  the 
recompense,  the  title,  either  of  the  exposition  or  competition  at 
which  it  was  obtained,  or  of  the  established  body,  public  estab- 
lishment, association  or  society,  that  has  awarded  it,  and  the 
date  on  which  it  was  granted. 

The  simple  mention,  in  continuation  of  the  statement  of  a 
recompense,  of  the  name  of  a  city,  regime  or  country,  and  the 
date  of  the  exposition  or  competition,  is  reserved  exclusively 
for  expositions  or  competitions  organized,  patronized  or  author- 
ized by  the  Government  of  Our  Cherifian  Empire  or  by  a  foreign 
Government. 

ART.  103.    The  Registers  in  which  mention  is  made  of  the 


612         MOROCCO  (FRENCH  ZONE) 

registration  of  lists  of  awards,  diplomas  or  certificates,  and 
declarations  of  assignment  or  transfer  of  commercial  capital 
or  of  products,  shall  be  open  freely  to  the  public,  as  well  as,  the 
case  occurring,  the  titles  deposited. 

Any  interested  party  has  the  right  to  have  delivered  to 
himself  a  list  of  said  registrations  and  of  said  declarations 
and  a  copy  of  the  titles  deposited. 

ART.  104.  An  order  of  Our  Grand  Vizir  will  determine  the 
formalities  and  conditions  of  the  registration  of  lists  of  awards, 
diplomas  and  certificates,  declarations  of  assignment  or  of 
transfer  of  commercial  capital  or  of  a  product,  provided  for  in 
Art.  101,  of  the  delivery  of  the  lists  and  copies  noted  in  para- 
graph 2  of  Art.  103,  as  well  as  all  measures  necessary  for  the 
application  of  the  provisions  contained  in  the  present  chapter. 

It  shall,  in  addition,  fix  the  fees  to  be  collected  by  the 
Moroccan  Office  of  Industrial  Property  for  the  service  of  this 
Office,  by  reason  of  the  registration  of  lists  of  awards,  diplomas 
and  certificates,  the  declarations  noted  in  Art.  101,  and  the  de- 
livery of  the  lists  or  copies  provided  for  in  Art.  103.  The 
Public  Administrations  shall  be  exempt  from  the  payment  of 
the  said  fees. 

ART.  105.  The  provisions  of  the  present  chapter  shall  be 
applicable  to  recompenses  attributed  prior  to  the  coming  into 
effect  of  the  present  Dahir,  but  no  registration  shall  be  imposed 
on  holders  or  their  assigns  for  the  recompenses  noted  in  para- 
graphs numbered  1  and  2  of  Art.  99.  The  Administrations  in- 
terested are  alone  bound  to  have  the  lists  of  awards  of  said 
recompenses  registered  at  the  Moroccan  Office  of  Industrial 
Property. 

As  concerns  the  recompenses  noted  in  paragraph  numbered 
3  of  Art.  99,  the  holders  or  their  assigns  shall  not  be  obliged 
to  proceed  to  the  registration  of  diplomas  or  certificates;  how- 
ever, in  case  of  assignment  or  of  transmission  of  capital  effected 
subsequent  to  the  coming  into  effect  of  the  present  Dahir,  the 
parties  interested  that  shall  wish  to  make  an  industrial  or  com- 
mercial use  of  the  said  recompenses  shall  have  them  registered 
in  conformity  with  the  provisions  of  Art.  100,  and  effect  the 
declaration  provided  for  in  the  final  paragraph  of  Art.  101. 

HEADING  IX 

CONCERNING  THE  MOROCCAN  OFFICE  AND  THE  INDUSTRIAL 
PROPERTY  REGISTERS 

ART.  106.  The  Moroccan  Office  of  Industrial  Property,  in- 
stituted by  Art.  9  of  the  present  Dahir,  shall  be  located  at  Rabat, 
and  shall  be  devoted  to  the  service  of  economic  studies  and  in- 


MOROCCO  (FRENCH  ZONE)         613 

formation,  attached  to  the  Direction  of  Agriculture,  Commerce, 
and  Colonization  of  the  Cherifian  Empire,  by  Dahir  of  August 
28,  1915  (Bulletin  Officiel,  No.  149,  of  August  30,  1915). 

ART.  107.    The  office  shall  comprise: 

1)  A  section  directly  open  to  the  public; 

•  ••••••••• 

3)  And  a  section  of  designs  and  models,  marks  of  manu- 
facture and  of  commerce,  and  industrial  recompenses. 

It  shall  keep  the  registers  of  industrial  property  necessary 
for  the  execution  of  the  present  Dahir. 

It  shall  assure  the  publicity  provided  for  in  the  present 
Dahir  in  the  Bulletin  Officiel  of  the  Protectorate. 

ART.  108.  The  section  directly  open  to  the  public  shall  be 
charged  with: 

•  •••••»••• 

4)  Communications  of  ...  marks  of  manufacture  and  of 
commerce,  certificates  of  guarantee  in  expositions  and  industrial 
recompenses ; 

5)  The  service  of  research  and  the  special  funds  of  the 
Office. 


ART.  110.  The  section  of  designs  and  models,  marks  of 
manufacture  and  of  commerce,  expositions  and  industrial  recom- 
penses shall  have  as  prerogatives: 

1)  The  study  of  questions  relative  to  the  application  of 
the  laws  concerning  .   .   .  marks  of  manufacture  and  of  com- 
merce, and  industrial  recompenses; 

2)  The  relations  with  the  International  Bureau  at  Berne 
for  the  international  registration  of  marks  of  manufacture  and 
of  commerce ; 

3)  The  keeping  of  the  registers  of  industrial  property  and 
the  preparation  of  the  part  of  the  Bulletin  Officiel  relative  to 
its  attributes. 

ART.  111.  The  Chief  of  the  Service  of  Economic  Studies 
and  Information  shall  provide  for  the  direction  of  the  Moroccan 
Office  of  Industrial  Property. 

ART.  112.  The  said  Chief  of  the  service  shall  be  assisted 
by  a  Technical  Commission  named  for  four  years  by  residential 
order. 

It  shall  comprise: 

The  Director  of  Commerce  and  Agriculture,  President ; 

The  Chief  of  the  Service  of  Economic  Studies ; 

The  Chief  of  the  Service  of  Legislative  Studies ; 


614        MOROCCO  (FRENCH  ZONE) 

A  professor  occupying  a  chair  concerned  with  industrial 
and  commercial  legislation; 

A  jurist ; 

A  member  of  each  of  the  Chambers  of  Commerce  of  the 
French  Zone  of  the  Cherifian  Empire ;  and 

Two  well  known  natives  of  the  country. 

The  Commission  shall  make  use  of  a  Secretary  chosen  from 
among  the  personnel  of  the  Office. 

ART.  113.    It  shall  be  consulted: 

1)  Upon  questions  relative  to  the  procedure  of  the  Office; 
it  shall  give  its  advice  on  these  questions; 

2)  On  the  days  and  hours  of  the  opening  to  the  public  of 
the  offices  of  consultation  for  .   .   .  marks  of  manufacture  and 
of  commerce,  and  industrial  recompenses; 

3)  On  the  method  of  publication  of  ...  certificates  of  ... 
marks  and  recompenses,  and  with  regard  to  the  charges  to  be 
made  for  the  copies  placed  on  sale ; 

4)  And  on  all  questions  that  shall  be  submitted  to  it  by 
the  Office. 

It  shall  prepare  annually,  during  the  month  of  October,  a 
report  concerning  the  operation  of  the  Office,  to  be  submitted 
to  the  Resident  Commissioner  General. 

It  shall  meet  at  the  call  of  its  President. 

ABT.  114.    Orders  of  Our  Grand  Vizir  shall  determine: 

1)  The  number,  form,  and  constitution  of  the  Registers  of 
industrial  property; 

2)  The  mode  and  conditions  as  to  the  printing  of  ...  cer- 
tificates, as  well  as  of  publications  in  the  Bulletin  Officiel  of  the 
Protectorate ; 

3)  The  regulation  of  the  details  necessary  for  the  execu- 
tion of  the  provisions  concerning  the  operation  of  the  Office. 

HEADING  X 

INFRACTIONS  AND  PENALTIES.    PROCEDURE  AND  COMPETENCE 

CHAP.  I 

Infractions  and  Penalties 
....»«.«•• 

SEC.  Ill 

Marks  of  Manufacture  and  of  Commerce 
ART.  120.    A  fine  of  from  50  to  3,000  francs  and  imprison- 
ment of  from  three  months  to  three  years,  or  either  of  these 
two  penalties,  shall  be  inflicted  on  those : 

1)  That  knowingly  have  counterfeited  a  mark  or  made  use 


MOROCCO  (FRENCH  ZONE)         615 

of  a  mark  without  the  authorization  of  the  party  interested, 
even  with  the  addition  of  the  words  "fagon,  recette,  imitation, 
imite,  genre,  etc.,"  or  any  other  indication  adapted  to  deceive 
the  buyer; 

2)  That  have  fraudulently  affixed  upon  their  products  or 
the  objects  of  their  trade  a  mark  belonging  to  others; 

3)  That  have  knowingly  sold  or  placed  on  sale  one  or  sev- 
eral products  bearing  a  counterfeit  or  fraudulently  affixed  mark ; 

4)  That  have  delivered  a  product  other  than  the  one  that 
was  demanded  from  them  under  a  deposited  mark. 

ART.  121.  They  shall  be  punished  with  a  fine  of  from  50  to 
2,000  francs  and  imprisonment  for  from  one  month  to  one  year, 
or  only  one  of  these  two  penalties : 

1)  That,  without  counterfeiting  a  mark,  have  made  a  fraud- 
ulent imitation  thereof  of  a  nature  to  deceive  the  buyer,  or  have 
made  use  of  a  mark  fraudulently  imitated ; 

2)  That  have  made  use  of  a  mark  bearing  features  adapted 
to  deceive  the  buyer  as  to  the  nature  of  the  product; 

3)  That  have  knowingly  sold  or  placed  on  sale  one  or  sev- 
eral products  bearing  a  fraudulently  imitated  mark  or  bearing 
indications  adapted  to  deceive  the  buyer  as  to  the  nature  of 
the  product. 

ABT.  122.  They  shall  be  punished  with  a  fine  of  from  50 
to  1,000  francs  and  imprisonment  of  from  fifteen  days  to  six 
months,  or  either  of  these  two  penalties : 

1)  That  have  not  affixed  upon  their  products  a  mark  de- 
clared obligatory; 

2)  That  have  sold  or  placed  on  sale  one  or  several  products 
not  bearing    the    mark  declared  obligatory  for  this  class  of 
products ; 

3)  That  have  contravened  the  provisions  of  the  decrees  ren- 
dered in  execution  of  Art.  1  of  the  present  law; 

4)  That  have  caused  the  signs  prohibited  by  paragraph  5 
of  Art.  1  to  figure  in  their  marks,  deposited  or  not. 

ABT.  123.  The  penalties  prescribed  in  Arts.  7,  8  and  9  may 
be  doubled  in  case  of  repetition  of  the  offense.  There  is  repeti- 
tion when,  during  the  five  years  preceding,  a  condemnation  for 
one  of  the  crimes  provided  for  by  the  present  law  has  been  pro- 
nounced against  the  accused. 

SEC.  IV 

Commercial  Names 

ABT.  124.  Any  usurpation  or  any  fraudulent  use  of  a  com- 
mercial name  shall  be  punished  with  the  same  penalties  as  those 
provided  for  in  Art.  120,  preceding  (trade  marks). 


616         MOROCCO  (FRENCH  ZONE) 

SEC.  V 

Industrial  Recompenses 

ABT.  125.  Punishment  by  a  fine  of  from  50  to  6,000  franca 
and  imprisonment  for  from  three  months  to  two  years,  or  only 
one  of  these  two  penalties,  shall  be  pronounced  against: 

1)  Those  that,  without  right  and  fraudulently,  shall  have 
attributed  to  themselves    the    recompenses  mentioned  in  the 
present  law,  or  shall  have  attributed  to  themselves  imaginary 
recompenses,  by  apposition  on  their  products,  signs,  announce- 
ments, prospectuses,  letters,  commercial  papers,  containers,  or 
on  any  other  matter ; 

2)  Those  that,  under  the  same  conditions,  shall  have  affixed 
them  to  objects  other  than  those  for  which  they  have  been  ob- 
tained ; 

3)  Those  that,  under  the  same  conditions,  shall  have  availed 
themselves  thereof  with  juries  of  expositions  or  competitions ; 

4)  Those  that,  by  any  artifice  whatsoever,  captious  mention 
or  figurative  sign,  reproducing  more  or  less  exactly  the  con- 
ventional aspect  of  a  medal,  shall  have  attempted  to  induce  the 
public  to  believe  that  they  have  obtained  a  recompense  that,  in 
fact,  has  not  been  attributed  to  them ; 

5)  Those  that  shall  have  made  industrial  or  commercial 
use  of  recompenses  other  than  those  provided  for  in  Art.  1  of 
the  present  law; 

6)  Those  that  shall  have  availed  themselves  unduly  on  the 
occasion  of  an  exposition  or  of  a  competition,  in  circulars,  pros- 
pectuses, posters,  diplomas,  certificates,  lists  of  awards,  or  in 
any  other  manner,  of  the  authorization  or  of  the  patronage  of 
a  Minister  or  any  other  authority  or  public  administration  with- 
out having  previously  obtained  it,  or  that  shall  have  had  appear 
on  their  documents  titles,  devices,  vignettes,  arms,  armorial 
bearings,  or  any  other  signs  or  mentions  of  a  nature  to  induce 
to  a  belief  as  regards  this  authorization  or  this  patronage. 

ABT.  126.  Punishment  by  a  fine  of  from  50  to  3,000  francs 
shall  be  inflicted  on: 

1)  Those  that  shall  have  made  industrial  or  commercial 
use  of  a  recompense  without  fulfilling  the  conditions  prescribed 
by  Arts.  2,  3,  and  4 ; 

2)  Those  that  shall  have  presented  to  the  magistrates  or 
functionaries  qualified  to  this  effect  a  diploma  or  certificate  rela- 
tive to  a  recompense,  as  provided  for  in  Art.  4  of  the  present 
law,  for  having  the  signatures  thereof  legalized,  without  having 
justified  the  prior  registration  at  the  National  Office  of  Indus- 
trial Property  of  either  the  diploma  or  certificate  or  the  list  of 
awards  mentioning  the  said  recompense. 


MOROCCO  (FRENCH  ZONE)  617 

SEC.  VI 

Other  Infractions 

ART.  127.  All  infractions  relating  to  the  provisions  of  the 
present  Dahir — other  than  those  provided  for  in  the  five  pre- 
ceding sections  of  the  present  chapter  and  aside  from  acts  of 
unfair  trade  that  give  occasion  only  to  damages  and  injuries- 
shall  be  punished  in  accordance  with  the  same  penalties  as  those 
included  in  Art.  125. 

SBC.  VII 

Accessory  Penalties  and  General  Provisions 
(Art.  463  of  the  Penal  Code) 

ART.  128.  Confiscation  to  the  profit  of  the  injured  party, 
of  the  objects  or  products  injuring  the  rights  guaranteed  by 
the  present  Dahir,  as  well  as  the  instruments  and  utensils  that 
have  served  or  been  intended  for  their  manufacture,  shall  be 
pronounced  by  the  court,  even  in  case  of  acquittal. 

ART.  129.  The  court  shall  order  the  destruction,  in  every 
case,  of  the  marks,  mentions,  indications,  effigies,  or  representa- 
tions recognized  as  contrary  to  the  dispositions  of  the  present 
Dahir. 

In  whatever  concerns  obligatory  marks,  the  tribunal  shall 
prescribe  that  they  be  affixed  to  the  products  that  are  subject 
thereto,  and  it  shall  be  empowered  to  pronounce  the  confiscation 
of  the  products  if  the  accused  has  incurred,  during  the  five  years 
preceding,  a  condemnation  for  any  of  the  crimes  provided  for 
by  the  first  two  paragraphs  of  Art.  120. 

ART.  130.  Those  found  guilty  may,  furthermore,  be  de- 
prived of  the  right  of  becoming  members  of  chambers  of  com- 
merce, local  or  central  committees  of  economic  studies,  any 
consulting  chamber,  or  any  elective  assembly  possible  of  being 
substituted  for  these  organizations.  The  term  of  this  inter- 
diction shall  last  not  longer  than  ten  years. 

The  court  may  order  the  posting  of  the  judgment  in  places 
that  it  shall  determine,  and  its  insertion  in  whole  or  in  excerpt 
in  journals  that  it  shall  designate,  all  this  at  the  expense  of  the 
guilty  party. 

ART.  131.  Art.  463  of  the  Penal  Code  shall  be  applicable 
to  crimes  denounced  and  punished  by  the  present  law. 

ART.  132.  Damages  may  be  adjudged  to  the  injured  parties 
by  the  court  having  jurisdiction,  even  in  case  of  acquittal  from 
the  penal  point  of  view. 

CHAP.  II 
Procedure  and  Competence 

ART.  133.    Any  party  injured  may,  by  virtue  of  an  order 


618         MOROCCO  (FRENCH  ZONE) 

of  the  President  of  the  Tribunal  of  First  Instance  in  the  juris- 
diction wherein  the  procedure  must  be  effected,  proceed  to  de- 
tailed designation  and  description,  with  or  without  confiscation, 
of  the  objects  and  products,  instruments  and  utensils. 

AST.  134.  The  order  shall  be  granted  on  simple  request 
and  on  presentation  of  the  title  invoked  by  the  petitioner;  it 
shall  contain  the  designation  of  the  Secretariat  of  the  Tribunal 
of  First  Instance  or  of  the  Tribunal  of  Peace  charged  with  the 
procedure  and,  should  occasion  arise,  the  name  of  an  expert  to 
aid  the  agent  of  the  Secretariat  in  his  description. 

ART.  135.  When  there  is  occasion  for  confiscation,  the  said 
order  may  impose  a  bond  on  the  petitioner  which  he  is  required 
to  furnish  before  proceeding  thereto. 

The  bond  shall  always  be  imposed  on  foreigners.  French 
citizens  shall  not  be  considered  as  foreigners. 

ART.  136.  Proofs  and  confiscations  shall  be  made  in  con- 
formity with  the  prescriptions  of  Arts.  217  and  218,  and  309  to 
314,  of  Our  Dahir  concerning  Civil  Procedure. 

With  the  custodian  there  shall  be  left  a  copy  of : 

1)  The  petition  and  of  the  order  authorizing  the  procedure ; 

2)  The  deed  evidencing  the  deposit  of  the  bond,  if  there  be 
such;  and 

3)  The  objects  described  or  seized,  all  this  on  pain  of  in- 
validity. 

ART.  137.  In  the  case  provided  for  by  No.  4  of  Art.  120 
(delivery  of  a  product  other  than  the  one  that  has  been  applied 
for  under  a  deposited  mark),  the  agent  of  the  Secretariat  is  not 
required  to  show  the  order  until  after  the  delivery  of  the  product 
other  than  the  one  for  which  request  was  made,  and,  if  the  order 
authorizes  several  proofs  of  substitution,  only  after  the  last 
delivery. 

ART.  138.  In  default  by  the  petitioner  of  bringing  suit 
either  civilly  or  criminally  within  a  term  of  fifteen  days — in 
addition  to  one  day  for  each  five  myriametres  (50,000  metres) 
of  distance  between  the  place  at  which  the  objects  described  or 
seized  are  found  and  the  domicile  of  the  party  to  be  prosecuted, 
or  of  his  special  representative — the  description  or  seizure  shall 
be  of  no  legal  effect,  without  prejudice  to  damages. 

ART.  139.  Public  action  may  be  brought  by  the  Public 
Minister  only  on  complaint  of  the  injured  party. 

Summons  delivered  in  civil  cases  shall  take  the  place  of  a 
complaint. 

The  prosecution  once  begun,  the  withdrawal  of  the  private 
party  remains  without  effect  on  the  action. 

ART.  140.     Civil  or  criminal  action  shall  be  lodged  before 


MOROCCO  (FRENCH  ZONE)         619 

the  Tribunals  of  First  Instance  of  the  domicile  of  the  party 
prosecuted  or  that  of  his  special  representative,  and,  on  default 
(of  domicile),  before  the  Tribunal  of  First  Instance  of  the  place 
at  which  the  objects  or  products  complained  of  have  been  found. 

The  Tribunals  shall  rule  on  all  exceptions  that  shall  be 
raised  either  as  to  the  nullity  or  expiry  of  the  title  invoked  or 
any  other  question  relative  to  the  ownership  or  use  of  the  said 
title. 

ABT.  141.  In  case  there  should  result  a  modification  as  to 
the  deposits,  declarations,  and  inscriptions  provided  for  by  the 
present  Dahir,  mention  of  this  modification  in  the  Registers  of 
the  Moroccan  Office  of  Industrial  Property  shall  be  ordered  by 
a  special  decree  of  the  judgment  or  the  order  evidencing  this 
modification.  For  this  purpose,  an  extract  from  the  judgment 
or  from  the  order  in  definitive  form  shall  be  forwarded  to  the 
Moroccan  Office  of  Industrial  Property  under  the  supervision 
of  the  Secretariat  of  the  Archives  of  the  Tribunal  or  of  the 
Court. 

The  expenses  of  the  extract  to  be  forwarded,  as  well  as  the 
mention  ordered,  shall  be  added  as  accessories  to  the  costs  of 
the  case,  and  borne  by  the  party  that  shall  have  been  condemned 
to  the  said  costs. 

HEADING  XI 

THE  COMING  INTO  FORCE  OF  THE  DAHIB 
ART.  142.    The  present  Dahir  shall  become  of  effect  on 
January  1,  1917.* 

*  According  to  an  Official  Communication  the  entry  into  force  of  this  Dahir 
was  deferred  until  March  1,  1917. 


THE  NETHERLANDS 

LAW  OF  SEPTEMBER  30,  1893,  AS  AMENDED  DECEM- 
BER 30,  1904 

SECTION  I — BUREAU  OF  INDUSTRIAL  PROPERTY  AND  BRANCH  OFFICES 

ARTICLE  1.  There  shall  be  created  a  Bureau  of  Industrial 
Property  for  the  Kingdom  in  Europe  and  its  colonies  and  pos- 
sessions in  other  parts  of  the  world.  This  Bureau  shall  serve 
at  the  same  time  as  the  central  depository,  as  provided  for  in 
Art.  12  of  the  International  Convention  for  the  Protection 
of  Industrial  Property  concluded  at  Paris  on  the  twentieth  day 
of  March,  1883,  and  adhered  to  by  the  Law  of  April  23,  1884 
(Staatsblad  [Official  Gazette],  No.  53). 

This  Bureau  shall  be  under  the  administration  of  the  Minis- 
ter of  Agriculture,  Industry  and  Commerce  and  shall  be  located 
at  The  Hague.  The  direction  of  the  Bureau  shall  be  controlled 
by  the  ordinary  administrative  rules. 

The  sums  collected  by  the  Bureau,  in  pursuance  of  the 
present  law  or  in  pursuance  of  the  Arrangement  Relative  to 
the  International  Registration  of  Marks  of  Manufacture  and 
of  Commerce  agreed  to  at  Madrid  on  the  fourteenth  day  of 
April,  1891,  and  adhered  to  by  the  Law  of  December  12,  1892 
(Staatsblad,  No.  270),  as  such  Arrangement  has  been  amended 
by  the  additional  Act  signed  at  Brussels  on  the  fourteenth  day 
of  December,  1900,  and  ratified  by  the  Law  of  June  7,  1902 
(Staatsblad,  No.  85),  shall  be  delivered  to  the  Treasury  of  the 
Kingdom,  so  far  as  they  shall  not  have  been  transmitted  to  the 
Bureau  of  the  Union  for  the  Protection  of  Industrial  Property 
at  Berne.  The  Director,  upon  whom  rests  the  responsibility  for 
these  sums,  shall  be  subject  to  the  common  administrative  rules. 

ART.  2.  Through  ordinary  measures  there  shall  be  created 
subsidiary  Bureaux  of  Industrial  Property,  which  shall  serve 
at  the  same  time  as  branch  depositories  and  which  shall  be 
charged  with  making  known  to  the  public  the  marks  of  manu- 
facture and  of  commerce  of  the  colonies  and  possessions  in 
other  parts  of  the  world ;  the  other  functions  of  these  subsidiary 
Bureaux  shall  be  determined  at  the  same  time  with  those  func- 
tions of  the  Bureau  of  Industrial  Property  connected  therewith 
and  mentioned  in  the  first  paragraph  of  Art.  1. 
SECTION  II — REGISTRATION,  INTERNATIONAL  REGISTRATION,  RE- 
NEWALS AND  EXPIRATIONS  OF  TRADE  MARKS 

ART.  3.    The  right  to  the  exclusive  use  of  a  mark  for  dis- 


THE  NETHERLANDS  621 

tinguishing  the  products  of  industry  or  of  commerce  of  one 
person  from  those  of  others,  pertains  to  him  that,  in  the  King- 
dom in  Europe  or  in  the  colonies  or  possessions  in  other  parts 
of  the  world,  shall  have  first  made  use  of  the  mark  for  the 
purpose  indicated,  but  only  as  regards  the  kind  of  goods  for 
which  the  mark  shall  have  been  employed  and  during  a  term 
of  not  to  exceed  three  years  from  the  last  use  that  shall  have 
been  made  thereof. 

Save  in  case  of  proof  to  the  contrary  and  reserving  those 
provisions  contained  in  the  following  paragraph,  the  person 
that  first  fulfills  the  formalities  provided  for  in  Art.  4  shall  be 
considered  as  having  been  the  first  to  make  use  of  a  registered 
mark. 

Any  person  that  shall  have  filed  a  trade  mark  with  the 
Bureau  of  Industrial  Property  within  a  term  of  four  months 
after  he  shall  have  filed  a  regular  application  for  the  said  mark 
in  one  of  the  States  that  have  become  parties  to  the  Inter- 
national Convention  at  Paris  shall  be  considered,  according  to 
Art.  6  of  this  Convention,  as  having  made  use  of  that  mark  in 
the  Kingdom  in  Europe  since  the  beginning  of  the  said  term. 

Any  person  that,  within  six  months  after  the  opening  of 
an  official  or  officially  recognized  international  exposition  held 
in  the  territory  of  one  of  the  States  that  have  become  parties 
to  the  aforesaid  International  Convention  of  Paris,  shall  file 
with  the  Bureau  of  Industrial  Property  a  mark  under  which 
the  objects  of  his  trade  or  industry  were  exhibited  at  this  ex- 
position, in  order  to  have  it  registered,  according  to  Art.  4,  for 
the  same  kind  of  products,  shall  be  considered  as  having  made 
use  of  the  said  mark  in  the  Kingdom  in  Europe  from  the  day 
when  it  appeared  at  the  exposition  as  the  distinctive  sign  of  his 
products  of  the  same  nature.  The  Bureau  of  Industrial  Prop- 
erty may  require  as  proof  of  the  day  on  which  the  mark  has 
thus  appeared  at  the  exposition  the  production  of  a  declaration 
certified  by  the  direction  of  the  exposition  or  by  some  com- 
petent person  or  authority  recognized  by  this  Bureau. 

ABT.  SBIS.  Registration  may  be  obtained  for  a  mark  in  the 
name  of  several  persons  only  when  such  persons  have  all  jointly 
a  right  to  the  factory  or  to  the  establishment  of  commerce  the 
products  whereof  are  to  be  distinguished  by  such  mark. 

The  Bureau  of  Industrial  Property  may  demand  as  proof 
of  this  fact  that  a  certified  extract  of  the  act  establishing  the 
collective  right  in  question  be  filed. 

ART.  4.  In  order  to  obtain  the  registration  of  a  mark,  the 
interested  party  shall  file  with  the  Bureau  of  Industrial  Prop- 
erty a  suitable  cliche  (electrotype)  of  not  less  than  1.5  centime- 


622  THE  NETHERLANDS 

tres  nor  more  than  10  centimetres  in  length  and  width,  and  of 
2.4  centimetres  in  height,  together  with  two  signed  specimens  of 
a  distinct  copy  of  the  mark,  and  with  a  corresponding  and 
exact  description  of  the  latter.  In  this  description  there  should 
be  specified  all  of  the  goods  of  that  class  for  which  the  mark 
is  intended,  and  applicant's  full  name  and  domicile.  If  a  color 
is  specified  in  the  description  as  constituting  an  essential  feature 
of  the  mark,  applicant  should  place  at  the  disposal  of  the  Bureau 
of  Industrial  Property  colored  specimens  of  such  mark,  the 
number  of  which  shall  be  fixed  by  the  Bureau. 

A  trade  mark  may  also  be  filed  by  a  person  empowered  by 
written  authority. 

A  trade  mark  shall  not  contain  any  words  or  representa- 
tions that  are  contrary  to  good  morals,  or  by  means  of  which 
the  use  of  a  mark  may  affect  public  order.  Neither  shall  a  mark 
contain  the  arms  of  the  Kingdom,  even  with  slight  alterations, 
nor  those  of  a  province,  commune,  or  any  other  public  cor- 
poration. 

On  the  filing  of  a  trade  mark  there  must  be  paid  thirty 
guilders  for  each  mark;  this  sum  will  in  no  case  be  returned. 

ART.  5.  Except  as  provided  for  in  Art.  9,  a  mark  filed  in 
conformity  with  the  provisions  of  the  preceding  article  shall, 
within  eight  days  from  the  date  of  its  receipt,  be  entered  by 
the  Bureau  of  Industrial  Property  in  the  Public  Register  des- 
tined for  this  purpose;  the  form  of  which  Register  shall  be 
determined  by  the  Minister  empowered  with  the  carrying  out 
of  this  law. 

The  two  filed  copies  of  the  mark  and  the  description  shall 
be  certified  to  and  the  date  and  number  of  the  entry  in  the 
Register  shall  be  added  thereto. 

One  of  these  copies  shall  be  returned  to  the  applicant  within 
the  three  following  days. 

In  the  case  provided  for  in  the  second  paragraph  of  Art.  4 
the  power  shall  be  attached  to  the  other  copy. 

ART.  6.  Under  the  direction  of  the  Bureau  of  Industrial 
Property  there  shall  be  published  the  descriptions  filed  as  pro- 
vided for  in  Art.  4,  along  with  an  impression  of  the  cliche,  of 
marks  inscribed  since  the  last  succeeding  publication,  with  also 
a  description  of  the  class  of  goods  for  which  they  are  intended 
and  of  the  address  of  the  applicant. 

These  aforesaid  announcements  shall  be  placed  in  special 
supplements  of  the  journal,  which  shall  be  separably  obtainable 
by  any  person. 

The  cliches  shall  be  returned  to  those  trade  mark  owners 
that  shall  so  request. 


THE  NETHERLANDS  623 

ART.  7.  A  subject  of  The  Netherlands  or  a  foreigner  re- 
siding in  the  Kingdom  in  Europe  or  possessing  there  an  indus- 
trial or  commercial  establishment  of  serious  nature  and  serving 
effectively  for  the  exploitation  of  an  industry  or  of  a  line  of 
business,  who  wishes  also  to  assure  in  the  other  States  that 
have  become  parties  to  the  Convention  of  Madrid — mentioned 
above — the  protection  of  a  mark  deposited  by  him  in  conformity 
with  Art.  4,  for  the  same  kind  of  goods,  shall  transmit  to  the 
Bureau  of  Industrial  Property  three  additional  specimens  of 
a  distinct  copy  of  the  mark,  one  of  which  must  be  signed;  a 
declaration  in  French,  signed  by  himself,  of  the  kind  of  goods 
upon  which  the  trade  mark  is  to  be  affixed ;  and  a  cliche  prepared 
in  accordance  with  the  requirements  of  Art.  4.  If  the  color  of 
the  mark  constitutes  an  essential  feature  of  the  latter,  the  ap- 
plicant shall  mention  this  fact  in  a  detailed  description  of  the 
trade  mark,  signed  by  himself  and  annexed  to  the  filing  papers, 
and  he  shall  place  at  the  disposal  of  the  Bureau  of  Industrial 
Property  colored  specimens  of  such  mark,  the  number  of  which 
will  be  fixed  by  the  Bureau. 

The  second  paragraph  of  Art.  4  shall  be  applicable  to  this 
case. 

The  said  Bureau  shall  preserve  the  signed  specimen  copy 
after  having  certified  it;  then,  if  the  trade  mark  is  registered 
in  accordance  with  the  requirements  of  Art.  5,  or  immediately 
after  such  registration,  this  Bureau  shall  proceed,  in  conformity 
with  established  rules,  to  apply  for  registration  in  the  Inter- 
national Bureau  at  Berne,  and  it  shall  notify  the  applicant  of 
all  communications  relative  to  his  mark  that  it  may  receive  from 
the  International  Bureau,  and  in  which  the  said  applicant  is 
liable  to  be  interested. 

If  a  trade  mark,  filed  in  accordance  with  the  requirements 
of  Art.  4,  is  not  registered  as  provided  for  by  Art.  5,  then  the 
Bureau  of  Industrial  Property  shall  inform  the  applicant  that 
his  application  for  registration  with  the  International  Bureau 
at  Berne  cannot  be  effected  for  the  present. 

When  the  filing  is  effected,  the  sum  of  sixty  guilders  must 
be  paid  for  one  trade  mark,  and  the  sum  of  thirty  guilders  for 
every  additional  trade  mark  filed  simultaneously  with  the  first 
one  by  the  same  owner  or  in  his  name.  The  sums  paid  in  this 
manner  will  in  no  case  be  returned. 

ART.  8.  Within  eight  days  after  receipt  of  the  notification 
from  the  International  Bureau  at  Berne,  provided  for  in  Art.  3 
of  the  aforementioned  revised  Arrangement  of  Madrid,  the  Bu- 
reau of  Industrial  Property  shall  enter — except  in  those  cases 
provided  for  in  Art.  9 — the  trade  mark  referred  to  in  said  noti- 


624  THE  NETHERLANDS 

fication  in  the  public  Register  destined  for  this  purpose,  the 
form  of  which  Register  shall  be  determined  by  the  Minister. 

This  notification  shall  be  certified  to  on  receipt,  and  the 
date  and  number  of  the  entry  in  the  Register  shall  be  added 
thereto. 

If  a  trade  mark  registered  under  international  arrange- 
ments has  been  filed  in  the  Bureau  of  Industrial  Property  in 
compliance  with  the  requirements  prescribed  by  Art.  7,  this 
Bureau  shall  notify  the  applicant  as  soon  as  possible  of  such 
international  registration,  and  it  shall  deliver  to  him  a  duly 
dated  certificate  showing  that  the  registration  specified  in  the 
first  paragraph  of  this  article  has  been  effected. 

All  persons  shall  have  the  right  to  procure  the  supplement 
to  the  journal  of  the  International  Bureau  at  Berne  in  which 
are  published  all  trade  marks  registered  under  international 
arrangements. 

The  fact  that  said  publication  is  placed  at  the  disposal  of 
the  public,  as  provided  for  in  Art.  6,  shall  be  announced  each 
time  in  the  publication  mentioned. 

ART.  9.  If  a  trade  mark  filed  in  accordance  with  Art.  4, 
or  if  a  foreign  trade  mark  of  that  kind  specified  in  Art.  8,  is 
entirely,  or  in  its  essential  features,  identical  with  a  trade  mark 
registered  in  the  name  of  another  person  for  goods  of  the  same 
description,  or  if  it  is  not  in  accordance  with  the  provisions 
contained  in  the  last  but  one  paragraph  of  Art.  4,  then  the 
Bureau  of  Industrial  Property  may  refuse  registration ;  in  this 
case  the  Bureau  shall  notify  the  applicant  in  writing  of  this 
fact  with  statement  of  reasons,  within  eight  days  after  the  filing 
of  the  trade  mark,  or  it  shall  notify  the  International  Bureau 
at  Berne  within  eight  days  after  the  receipt  of  the  notification 
specified  in  Art.  8. 

The  applicant  referred  to  in  Art.  4,  or  the  one  who  files  a 
trade  mark  of  that  kind  specified  in  Art.  8,  may  address  to  the 
District  Court  at  The  Hague  a  petition  signed  either  by  himself 
or  by  his  attorney  in  order  to  have  the  registration  effected. 
Such  petition  shall  be  presented  within  one  month  after  the 
above  mentioned  notification  in  case  of  applications  for  trade 
marks  of  that  kind  specified  in  Art.  4,  and  within  six  months 
after  said  notification  in  case  of  applications  for  those  trade 
marks  specified  in  Art.  8. 

ART.  10.  If  a  trade  mark  registered  in  accordance  with 
Art.  5,  or  a  foreign  trade  mark  registered  in  accordance  with 
Art.  8,  is  either  entirely  or  in  its  essential  features  identical 
with  a  trade  mark  for  the  same  class  of  goods  to  which  some 
other  person  has  a  right  by  virtue  of  Art.  3,  or  if  it  contains  a 


THE  NETHERLANDS  625 

name  or  firm  to  which  some  other  party  has  a  right,  then  that 
party  who  claims  such  right  may,  without  prejudice  to  other 
legal  remedies  which  are  at  his  disposal,  address  to  the  District 
Court  at  The  Hague  a  petition,  signed  either  by  himself  or  by 
his  attorney,  to  the  end  of  having  the  registration  declared  void. 
This  petition  shall  be  presented,  in  case  of  a  trade  mark  regis- 
tered in  accordance  with  Art.  5,  within  six  months  after  the 
publication  prescribed  by  Art.  6,  and,  in  case  of  a  foreign  trade 
mark  registered  according  to  Art.  8,  within  nine  months  after 
the  announcement  prescribed  at  the  end  of  said  article. 

The  interested  party  referred  to  in  the  first  paragraph  may, 
also  after  the  expiration  of  the  term  indicated  therein,  demand 
in  the  same  manner  that  a  registration  be  declared  void,  if  his 
right  results  from  a  judicial  decision. 

If  a  trade  mark  is  not  in  conformity  with  the  provisions  of 
the  last  paragraph  but  one  of  Art.  4,  the  public  prosecutor  may, 
during  the  term  fixed  in  the  first  paragraph,  demand  that  the 
Court  named  in  the  first  paragraph  should  declare  the  regis- 
tration to  be  void. 

AET.  11.  Within  three  days  the  recorder  of  the  court  shall 
notify  the  Bureau  of  Industrial  Property  in  writing  of  every 
petition  provided  for  in  Arts.  9  and  10  and  of  every  demand 
made  by  the  public  prosecutor  in  accordance  with  Art.  10. 

ABT.  12.  The  Tribunal  shall  decide  in  the  Chamber  of 
Council. 

No  decision  shall  be  rendered  on  a  petition  filed  pursuant 
to  Art.  9  unless  the  petitioner  and  the  Director  of  the  Bureau 
have  been  given,  respectively,  an  opportunity  to  assert  verbally 
before  the  Tribunal,  on  the  one  hand,  the  right  to  register  a 
trade  mark  and  to  urge,  on  the  other  hand,  those  reasons  that 
justify  a  refusal  of  registration.  The  petition  and  the  fact  that 
the  Tribunal  has  taken  such  petition  into  consideration  merely 
by  means  of  replying  to  it  in  order  to  appoint  a  day  for  the 
hearing,  shall  be  notified  by  the  petitioner  to  the  Director  within 
fourteen  days  after  the  issue  of  the  orders  of  the  Tribunal. 

No  decision  shall  be  rendered  on  a  petition  or  a  demand 
presented  in  pursuance  of  Art.  10  until  the  party  by  whom  a 
trade  mark  is  filed  has  been  heard  or  duly  summoned  on  that 
date  fixed  by  the  Tribunal  when  taking  the  petition  of  the  de- 
mand merely  into  consideration.  The  recorder  shall  notify  the 
Bureau  of  Industrial  Property  of  said  date  in  writing;  and  if 
there  be  in  question  a  trade  mark  registered  in  accordance  with 
Art.  5,  the  party  who  has  filed  such  trade  mark  shall  be  informed 
by  a  notification,  issued  by  the  petitioner  or  the  public  prosecu- 
tor, of  the  petition  or  demand  and  of  the  fact  that  it  has  been 


626  THE  NETHERLANDS 

taken  into  consideration;  said  notification  to  be  issued  within 
fourteen  days  after  the  signing  of  the  paper  showing  that  a 
petition  or  a  request  has  been  taken  into  consideration. 

If  there  be  in  question  a  trade  mark  registered  in  accord- 
ance with  Art.  8,  then  the  Bureau  of  Industrial  Property  shall 
notify  the  International  Bureau  at  Berne  of  the  petition  or  the 
demand,  and  it  shall  also  inform  the  latter,  with  the  least  pos- 
sible delay,  of  the  date  fixed  by  the  Tribunal  for  a  hearing; 
such  information  to  be  furnished,  at  least,  one  month  or  three 
months  in  advance,  according  as  the  party  who  has  filed  a  trade 
mark  resides  in  Europe  or  in  some  other  part  of  the  world. 

At  the  hearing  the  petitioner  or,  in  that  case  provided  for 
in  the  second  paragraph  of  Art.  10,  the  public  prosecutor  may 
argue  by  word  of  mouth  the  reasons  that  serve  as  a  basis  for 
the  petition  or  the  demand. 

Before  the  hearing,  prescribed  in  this  article,  is  closed,  the 
judge  shall  fix  the  day  on  which  he  intends  to  give  his  decision. 

ART.  12fiis.  Within  one  month  after  the  date  of  a  decision 
handed  down  by  the  Tribunal,  an  appeal  may  be  taken  to  the 
Court  at  The  Hague  which  shall  pass  judgment  in  the  Chamber 
of  Council. 

If  the  appeal  refers  to  a  trade  mark  the  registration  of 
which  has  been  refused  by  the  Bureau  of  Industrial  Property, 
then  the  provisions  contained  in  the  second  paragraph  of  Art. 
12  and  relating  to  the  first  instance  shall  be  applicable  on  ap- 
peal in  such  manner  that  the  prescribed  notification  shall 
emanate  from  the  Director  if  the  appeal  has  been  interposed  by 
the  latter. 

If  the  appeal  refers  to  a  case  where  a  petition  or  a  demand 
is  presented  to  the  effect  that  the  registration  of  a  trade  mark 
be  annulled,  then  the  provisions  contained  in  the  third  para- 
graph of  Art.  12  and  relating  to  the  first  instance  shall  be 
applicable  on  appeal  in  such  a  manner  that  the  summons  and 
the  notification  will  be  addressed  to  the  original  petitioner  in 
care  of  the  depositor  of  the  mark,  provided  that  he  is  the  one 
that  has  lodged  the  appeal. 

The  requirements  contained  in  the  fourth,  fifth  and  sixth 
paragraphs  of  Art.  12,  relating  to  a  demand  or  petition  refer- 
ring to  the  declaration  of  nullity  of  a  mark  or  to  a  hearing  before 
the  Tribunal,  are  applicable  to  the  appeal  and  to  the  hearing 
before  the  Court  in  such  a  manner  that  the  right  granted  to  the 
public  prosecutor  by  the  fifth  paragraph  belongs,  on  appeal,  to 
the  Attorney  General  before  the  Court. 

ART.  13.  Within  one  month  from  the  date  of  the  decision 
of  the  Court,  an  appeal  in  cassation  may  be  lodged. 


THE  NETHERLANDS  627 

If  there  be  in  question  a  trade  mark  filed  in  accordance  with 
Art.  4,  or  registered  according  to  Art.  5,  the  petition  referring 
thereto  shall  be  made  known  to  the  interested  opposing  party. 

If  this  appeal  is  lodged  with  a  view  to  obtaining  an  order  for 
the  registration  of  a  trade  mark,  the  Bureau  of  Industrial  Prop- 
erty shall  be  considered  as  the  interested  opposing  party. 

The  Recorder  of  the  High  Court  of  Justice  shall  notify  the 
Bureau  of  Industrial  Property,  within  three  days,  of  every 
appeal  in  cassation  that  is  not  lodged  by  said  Bureau. 

If  the  appeal  in  cassation  relates  to  a  trade  mark  of  the 
kind  referred  to  in  Art.  8,  the  Bureau  of  Industrial  Property 
shall  notify  the  International  Bureau  at  Berne  accordingly. 

ART.  14.  Any  person  that  has  no  domicile  within  the  ter- 
ritory of  the  Kingdom  in  Europe  shall  elect  domicile  within 
this  Kingdom  on  filing  a  trade  mark  of  the  kind  specified  in 
Arts.  4  or  7  and  on  presenting  one  of  those  petitions  made  ac- 
cording to  Arts.  9, 10, 12,1)18,  or  13. 

All  writs  shall  be  served  at  the  elected  domicile. 

ART.  15.  The  Recorder  shall  notify  the  Bureau  of  Indus- 
trial Property  in  writing,  within  three  days  after  the  decision 
rendered  by  a  Tribunal. 

The  same  notice  shall  be  given  by  the  Recorder  of  the  Court 
as  regards  any  decision  rendered  on  appeal,  and  by  the  Recorder 
of  the  High  Court  as  regards  the  result  of  an  appeal  in  cassation. 

In  accordance  with  the  decision  of  the  Tribunal  or  of  the 
Court,  which  has  become  effective,  or  in  conformity  with  the 
judgment  of  the  High  Court,  when  the  latter  has  rendered  a 
final  decision,  the  aforesaid  Bureau  shall  register  a  trade  mark 
or  make  a  note  of  the  annulment  of  the  registration  in  a  special 
column  of  the  public  Register  where  the  trade  mark  shall  have 
been  entered. 

The  registration  shall  then  be  considered  to  have  taken 
place  on  the  date  of  filing  or  on  that  of  the  reception  of  the 
notification  mentioned  in  Art.  8. 

The  aforesaid  Bureau  shall  communicate  to  the  Interna- 
tional Bureau  at  Berne  the  notifications  prescribed  by  the 
present  article,  if  they  concern  one  of  the  marks  mentioned  in 
Art.  8,  as  soon  as  the  decision  becomes  effective. 

ART.  16.     The  Bureau  of  Industrial  Property  shall  publish : 

1.  The  refusal  of  registration  of  a  mark  mentioned  in  Art. 
8,  as  soon  as  the  delay  prescribed  by  the  second  paragraph  of 
Art.  9  shall  have  expired  without  the  petition  provided  for  in 
said  article  having  been  presented,  or  as  soon  as  a  decision  re- 
jecting such  petition  has  become  effective ; 

2.  The  annulment  of  the  registration  of  a  mark  of  which 


628  THE  NETHERLANDS 

the  description  has  already  been  published  in  the  Nederlandsche 
Staatscourant,  or  of  which  the  International  registration  has 
already  been  announced  in  the  supplement  of  the  journal  of 
the  International  Bureau  at  Berne. 

3.  The  lapse  of  a  registration  for  one  of  the  causes  indi- 
cated in  parts  1  or  3  of  Art.  18; 

4.  The  transfer,  inscribed  in  conformity  with  Art.  20,  of 
a  mark  registered  in  conformity  with  Art.  5. 

The  publications  prescribed  in  the  present  article  shall  be 
made  in  the  special  supplements  of  the  journal  mentioned  in  the 
second  paragraph  of  Art.  6. 

ART.  17.  The  public  Registers  mentioned  in  Arts.  5  and 
8  may  be  consulted  gratuitously  by  any  person  in  the  Offices  of 
the  Bureau  of  Industrial  Property. 

Any  person  may  obtain,  at  his  cost,  an  extract  or  a  copy, 
of  which  the  cost  will  be  calculated  on  the  basis  of  Art.  11  of 
the  tariff  of  law-costs  and  fees  in  civil  cases. 

Any  person  may  obtain  a  written  statement  from  the  said 
Bureau  upon  the  payment  of  three  guilders  in  postage  stamps 
of  the  Netherlands,  the  Dutch  East  Indies,  Surinam,  Curasao, 
or  of  one  of  the  other  States  being  a  party  to  the  aforemen- 
tioned Paris  Convention. 

ART.  18.    A  registration  shall  cease  to  produce  its  effects : 

1.  By  cancellation  effected  at  the  request  of  the  person  in 
whose  name  the  registration  has  been  made  or  of  that  party  in 
whose  name  the  transfer  has  been  inscribed  in  conformity  with 
Art.  20; 

2.  By  the  lapse  of  twenty  years,  counting  from  the  date 
when  the  registration  took  place  in  conformity  with  Arts.  5  or 
8,  if  such  registration  has  not  been  renewed  before  the  expira- 
tion of  that  term,  or  if  the  renewal  has  not  been  repeated  within 
the  same  term ; 

3.  By  the  forfeiture  or  refusal  of  registration  in  the  coun- 
try of  origin; 

4.  Counting  from  December  31,  1913,  for  all  marks  that 
contain,  even  with  slight  modifications,  the  name  or  the  insignia 
of  the  "Red  Cross,"  also  called  the  " Geneva  Cross." 

The  annulment  of  the  registration  for  one  of  the  causes 
mentioned  in  parts  1  or  3  shall  be  recorded  with  indications  of 
the  reasons  in  the  column  destined  for  that  purpose  in  the  public 
Register  wherein  the  mark  was  inscribed. 

ART.  19.  In  order  to  effect  the  renewal  of  a  mark  regis- 
tered in  conformity  with  Art.  5,  the  interested  party  shall  ob- 
serve, before  the  expiration  of  the  term  indicated  in  part  2  of 


THE  NETHERLANDS  629 

the  preceding  article,  the  same  formalities  as  are  indicated  in 
Art.  4  for  the  first  deposit. 

The  copies  filed,  referred  to  in  the  first  paragraph  of  Art.  4, 
shall  be  certified,  with  the  addition  of  the  date  of  renewal. 

The  Bureau  of  Industrial  Property  shall  proceed  to  the 
renewal  of  the  registration  by  entering  the  date  in  the  column 
destined  for  this  purpose,  of  the  public  Register  where  the  mark 
has  been  inscribed. 

After  the  renewal  of  the  registration  of  a  mark  registered 
in  conformity  with  Art.  5,  there  shall  be  returned  to  the  inter- 
ested party,  within  three  days,  one  of  the  copies  mentioned  in 
the  second  paragraph  of  the  present  article. 

The  fourth  paragraph  of  Art.  5  and  Art.  6  shall  moreover 
be  applicable  to  this  mark. 

If  there  be  in  question  a  mark  deposited  with  a  view  to  the 
renewal  of  the  registration  and  the  accomplishment  of  the  for- 
malities indicated  in  Art.  7,  the  third  paragraph  of  said  article 
will  apply. 

The  renewal  of  the  registration  of  a  mark  registered  accord- 
ing to  Art.  8  shall  not  be  effected  before  the  reception  on  the 
part  of  the  International  Bureau  of  Berne  of  the  notification 
mentioned  in  said  article. 

This  notification  shall  be  certified  with  the  addition  of  the 
date  on  which  the  renewal  has  been  effected  in  the  Register. 

In  case  of  renewal  of  registration  in  the  country  of  an 
International  mark  registered  anew,  which  has  been  deposited 
according  to  Art.  7,  in  the  Bureau  of  Industrial  Property,  there 
will  be  delivered  to  the  interested  party,  within  three  days,  a 
dated  acknowledgment. 

With  the  renewed  registration  there  are  applicable  the 
second  and  the  third  paragraphs  of  Art.  10  and  the  other  articles 
of  this  law. 

The  Bureau  of  Industrial  Property  may  refuse  the  renewed 
registration  if  the  mark  is  in  conflict  with  the  stipulations  of 
Art.  4,  in  which  case  the  Bureau  shall  act  in  accordance  with  the 
first  paragraph  of  Art.  9;  in  this  case  there  are  applicable  the 
second  paragraph  of  Art.  9,  Art.  11,  and  the  other  articles  of 
this  law. 

ART.  20.  The  transfer  to  a  third  party  of  a  trade  mark 
registered  in  accordance  with  Art.  5,  will  only  be  registered  if 
the  industrial  or  commercial  establishment,  of  which  the  mark 
is  destined  to  distinguish  the  products,  has  been  transferred  at 
the  same  time  to  the  same  person. 

The  proof  of  that  which  precedes  shall  be  made  by  the  de- 
posit in  the  Bureau  of  Industrial  Property  of  a  certified  extract 


630  THE  NETHERLANDS 

from  the  instrument  relating  thereto. 

The  transfer  will  be  registered  in  case  of  marks  registered 
in  accordance  with  Art.  5,  on  the  written  application  of  the 
parties,  or  equally  on  the  demand  of  the  buyer  alone  if  the 
transfer  of  the  mark  results  sufficiently  from  the  extract  men- 
tioned in  the  preceding  paragraph;  and  in  case  of  marks  regis- 
tered in  accordance  with  Art.  8,  after  receipt  of  the  notice  from 
the  International  Bureau  of  Berne  relative  to  the  registration 
that  has  been  effected  there;  it  will  be  noted  on  the  margin 
of  the  registration. 

For  the  registration  of  the  transfer  of  a  mark  registered  in 
accordance  with  Art.  5,  there  will  be  due  a  Government  fee  of 
five  guilders  payable  at  the  time  when  said  inscription  is  ap- 
plied for. 

ART.  21.  The  International  Bureau  at  Berne  shall  be  im- 
mediately informed  of  any  forfeiture  or  of  any  petition  for 
registration  of  the  transfer  of  a  mark  registered  internationally 
which  has  been  deposited  in  the  Bureau  of  Industrial  Property 
in  accordance  with  Art.  7. 

The  transfer  of  a  trade  mark  of  this  kind  shall  not  be  regis- 
tered if  the  transfer  is  effected  in  favor  of  a  person  who  is  not 
a  subject  of  the  Dutch  Government,  who  is  not  domiciled  in  one 
of  the  States  that  have  become  parties  to  the  aforesaid  Madrid 
Convention,  and  who  does  not  possess  within  the  territory  of 
one  of  these  States  a  regular  industrial  or  commercial  estab- 
lishment for  carrying  on  effectively  some  industry  or  trade. 
SECTION  III — TRANSITORY  AND  FINAL  PROVISIONS 

ART.  22.  Those  trade  marks  that,  at  the  time  when  the 
present  law  shall  become  of  effect,  are  already  registered  in 
accordance  with  the  requirements  of  the  law  of  May  25,  1880 
(Staatsblad,  No.  85),  as  amended  by  the  law  of  July  22,  1885 
(Staatsblad,  No.  140),  shall  enjoy  the  same  protection  as  if  they 
were  registered  in  accordance  with  the  present  law.  The  twenty 
years  mentioned  in  Art.  18,  part  3,  shall  commence  to  run  for 
such  trade  marks  from  the  day  when  the  registration  was  ef- 
fected in  pursuance  of  the  above  mentioned  law. 

In  order  to  apply  Art.  7  to  the  present  law  such  trade 
marks  shall  be  considered  as  having  been  filed  in  accordance 
with  Art.  4. 

ART.  23.  A  mark  that,  at  the  time  when  the  present  law 
becomes  of  effect,  has  already  been  inscribed  by  the  Recorder 
of  some  tribunal,  shall,  on  the  written  request  of  the  depositor, 
and  excepting  the  provisions  of  Art.  9,  be  registered  imme- 
diately by  the  Bureau  of  Industrial  Property,  in  the  public 
Register  mentioned  in  Art.  5,  on  condition  that  the  application 


THE  NETHERLANDS  631 

relative  thereto  shall  have  been  presented  before  April  1,  1905. 
The  second  and  third  paragraphs  of  Art.  5,  the  first  and 
second  paragraphs  of  Art.  6,  and  the  other  articles  of  the  present 
law  shall  be  applicable  to  such  marks  under  the  following  con- 
ditions : 

1.  As  regards  Art.  6:   The  reproduction  of  the  mark  shall 
not  appear  in  the  publication  unless  there  has  been  filed  with 
the  petition  for  registration  a  cliche  made  in  conformity  with 
the  requirements  contained  in  Art.  4,  which  cliche  shall  be  re- 
turned after  use  to  any  applicant  that  may  make  a  request  to 
this  effect; 

2.  As  regards  Art.  7:    The  mark  shall  be  considered  as 
having  been  filed  in  accordance  with  Art.  4 ; 

3.  The  refusal  of  an  application  for  registration  filed  before 
April  1,  1905,  shall  not  be  permitted  and  a  petition  or  demand 
for  annulment  of  the  registration  shall  not  be  admissible. 

ART.  24.  The  Recorder  of  the  judicial  body  concerned  shall 
send  to  the  Bureau  of  Industrial  Property  one  single  copy  of 
the  decisions  of  the  Tribunal,  the  Court,  or  the  High  Court  men- 
tioned in  the  first  and  in  the  second  paragraphs  of  Art.  15,  as 
also  of  all  judgments  rendered  by  virtue  of  Art.  337  of  the 
Penal  Code  or  in  civil  suits  in  matters  of  industrial  property. 

This  sending  shall  take  place  within  eight  days  for  decisions 
tending  to  obtain  the  order  for  the  registration  of  a  mark,  and 
within  one  month,  reckoning  from  the  date  of  the  decision,  for 
all  other  final  decisions,  judgments  and  sentences. 

ART.  25.  The  present  law  shall  not  be  applicable  to  trade 
marks  established  by  public  authority. 

ART.  26.  The  law  of  May  25,  1880  (Staatsllad,  No.  85), 
as  amended  by  the  law  of  July  22,  1885  (StaatsUad,  No.  140), 
shall  become  inoperative  as  soon  as  the  present  law  goes  into 
effect. 

ART.  27.  This  law  shall  come  into  operation  on  the  day 
fixed  by  Royal  Order,*  and  it  may  be  cited  as  the  Trade  Marks 
Law. 

ART.  28.  The  Minister  of  Agriculture,  Industry  and  Com- 
merce is  charged  with  the  carrying  out  of  this  law. 

It  is  decreed  and  ordered  that  this  shall  be  published  in 
the  Staatsblad  and  that  all  such  Ministerial  Departments, 
Boards  and  Functionaries  as  it  concerns  shall  be  charged  with 
its  punctual  enforcement. 

*  December    1,    1893. 


NEWFOUNDLAND 

CONSOLIDATED  STATUTES,  THIRD  SERIES 
CHAPTER  154 

OF  TRADE  MARKS  AND  THE  REGISTRATION  THEREOF 
1.     (1)  Every  person  who— 

(a)  Forges  any  trade  mark;  or 

(b)  Falsely  applies  to  goods  any  trade  mark,  or  any  mark 
so  nearly  resembling  a  trade  mark,  as  to  be  calculated  to  de- 
ceive; or 

(c)  Makes  any  die,  block,  machine,  or  other  instrument  for 
the  purpose  of  forging,  or  of  being  used  for  forging,  a  trade 
mark;  or 

(d)  Applies  any  false  trade  description  to  goods;  or 

(e)  Disposes  of,  or  has  in  his  possession,  any  die,  block, 
machine,  or  other  instrument  for  the  purpose  of  forging  a  trade 
mark;  or 

(f)  Causes  any  of  the  things  above  in  this  section  men- 
tioned to  be  done, 

shall,  subject  to  the  provisions  of  this  chapter,  and  unless  he 
proves  that  he  acted  without  intent  to  defraud,  be  guilty  of  an 
offence  against  this  chapter. 

(2)  Every  person  who  sells,  or  exposes  for  sale,  or  has  in 
his  possession  for  sale,  or  for  any  purpose  of  trade  or  manu- 
facture, any  goods  or  things  to  which  any  forged  trade  mark 
or  false  trade  description  is  applied,  or  to  which  any  trade 
mark,  or  mark  so  nearly  resembling  a  trade  mark  as  to  be  cal- 
culated to  deceive,  is  falsely  applied,  as  the  case  may  be,  shall 
be  guilty  of  an  offence  against  this  chapter,  unless  he  proves — 

(a)  That  having  taken  all  reasonable  precautions  against 
committing  an  offence  against  this  chapter,  he  had  at  the  time 
of  the  commission  of  the  alleged  offence,  no  reason  to  suspect 
the  genuineness  of  the  trade  mark,  mark,  or  trade  description; 
and 

(b)  That  on  demand  made  by,  or  on  behalf  of  the  prose- 
cutor, he  gave  all  information  in  his  power  with  respect  to  the 
persons  from  whom  he  obtained  such  goods  or  things ;  or 

(c)  That  otherwise  he  had  acted  innocently. 

(3)  Every  person  guilty  of  an  offence  against  this  chapter 
shall  be  liable — 

(1)  On  conviction  on  indictment  to  imprisonment,  with  or 


NEWFOUNDLAND  633 

without  hard  labour,  for  a  term  not  exceeding  two  years,  or  to 
a  fine,  or  to  both  imprisonment  and  fine ;  and 

(2)  On  summary  conviction  to  imprisonment,  with  or  with- 
out hard  labour,  for  a  term  not  exceeding  four  months,  or  to  a 
fine  not  exceeding  one  hundred  dollars;  and  in  the  case  of  a 
seco'nd  or  subsequent  conviction  to  imprisonment,  with  or  with- 
out hard  labour,  for  a  term  not  exceeding  six  months,  or  to  a 
fine  not  exceeding  two  hundred  dollars;  and 

(3)  In  any  case,  to  forfeit  to  Her  Majesty  every  chattel, 
article,  instrument  or  thing,  by  means  of  or  in  relation  to  which 
the  offence  has  been  committed. 

(4)  The  Court  before  which  any  person  is  convicted  under 
this  section  may  order  any  forfeited  articles  to  be  destroyed, 
or  otherwise  disposed  of,  as  the  Court  thinks  fit. 

(5)  If  any  person  feels  aggrieved  by  any  conviction  made 
by  a  Court  of  summary  jurisdiction,  he  may  appeal  therefrom 
to  the  Supreme  Court. 

(6)  Any  offence  for  which  a  person  is,  under  this  chapter, 
liable  to  punishment  on  summary  conviction,  may  be  prose- 
cuted, and  any  articles  liable  to  be  forfeited  under  this  chapter, 
by  a  Court  of  summary  jurisdiction,  may  be  forfeited :  Provided 
that  a  person  charged  with  an  offence  under  this  section  before 
a  Court  of  summary  jurisdiction,  shall  on  appearing  before  the 
Court,  and  before  the  charge  is  gone  into,  be  informed  of  his 
right  to  be  tried  on  indictment,  and  if  he  requires,  to  be  tried 
accordingly. 

2.     (1)  For  the  purpose  of  this  chapter — 

The  expression  " trade  mark"  means  a  trade  mark  regis- 
tered in  the  register  of  trade  marks  kept  under  the  provisions 
of  this  chapter,  and  includes  any  trade  mark  which,  either  with 
or  without  registration,  is  protected  by  law  in  any  British  pos- 
session or  foreign  state,  to  which  the  provisions  of  the  one 
hundred  and  third  section  of  the  Imperial  "  Patents,  Designs 
and  Trade  Marks  Act,  1883,"*  are  under  order  in  Council  for 
the  time  being  applicable. 

The  expression  " trade  description"  means  any  descrip- 
tion, statement  or  other  indication,  direct  or  indirect: 

(a)  As  to  the  number,  quantity,  measure,  gauge  or  weight 
of  any  goods ;  or 

(b)  As  to  the  place  or  country  in  which  any  goods  were 
made  or  produced;  or 

(c)  As  to  the  mode  of  manufacturing  or  producing  any 
goods;  or 

*Repealed;  substantially  the  same  as  Great  Britain:  Patents  and  Designs  Act, 
1907,  Sec.  91,  which  see. 


634  NEWFOUNDLAND 

(d)  As  to  the  material  of  which  any  goods  are  composed;  or 

(e)  As  to  any  goods  being  the  subject  of  an  existing  patent 
privilege  or  copyright, 

and  the  use  of  any  figure,  word  or  mark  which,  according  to 
the  custom  of  the  trade,  is  commonly  taken  to  be  an  indication 
of  any  of  the  above  matters,  shall  be  deemed  to  be  a  trade 
description  within  the  meaning  of  this  chapter. 

The  expression  "false  trade  description"  means  a  trade 
description  which  is  false  in  a  material  respect  as  regards  the 
goods  to  which  it  is  applied,  and  includes  every  alteration  of 
a  trade  description  whether  by  way  of  addition,  effacement  or 
otherwise,  where  that  alteration  makes  the  description  false  in 
a  material  respect,  and  the  fact  that  a  trade  description  is  a 
trade  mark,  or  part  of  a  trade  mark,  shall  not  prevent  such 
trade  description  being  a  false  trade  description  within  the 
meaning  of  this  chapter. 

The  expression  "goods"  means  anything  which  is  the  sub- 
ject of  trade,  manufacture  or  merchandise. 

The  expressions  "person,"  "manufacturer,"  "dealer"  or 
trader"  and  "proprietor,"  include  any  body  of  persons  cor- 
porate or  incorporate. 

The  expression  "name"  includes  any  abbreviation  of  a 
name. 

(2)  The  provisions  of  this  chapter  respecting  the  applica- 
tion of  a  false  trade  description  to  goods  shall  extend  to  the 
application  to  goods  of  any  such  figures,  words  or  marks,  or 
arrangement  or  combination  thereof,  whether  including  a  trade 
mark  or  not,  as  are  reasonably  calculated  to  lead  persons  to 
believe  that  the  goods  are  the  manufacture  or  merchandise  of 
some  person  other  than  the  person  whose  manufacture  or  mer- 
chandise they  really  are. 

(3)  The  provisions  of  this  chapter  respecting  the  applica- 
tion of  a  false  trade  description  to  goods,  or  respecting  goods 
to  which  a  false  trade  description  is  applied,  shall  extend  to 
the  application  to  goods  of  any  false  name  or  initials  of  a  person, 
and  to  goods  with  the  false  name  or  initials  of  a  person  applied, 
in  like  manner  as  if  such  name  or  initials  were  a  trade  descrip- 
tion, and  for  the  purpose  of  this  enactment  the  expression  false 
name  or  initials  means,  as  applied  to  any  goods,  any  name  or 
initials  of  a  person  which — 

(a)  Are  not  a  trade  mark,  or  part  of  a  trade  mark;  and 

(b)  Are  identical  with,  or  a  colorable  imitation  of  the  name 
or  initials  of  a  person  carrying  on  business  in  connection  with 
goods  of  the  same  description,  and  not  having  authorised  the 
use  of  such  name  or  initials;  and 


NEWFOUNDLAND  635 

(c)  Are  either  those  of  a  fictitious  person  or  of  some  person 
not  bona  fide  carrying  on  business  in  connection  with  such  goods. 

3.  A  person  shall  be  deemed  to  forge  a  trade  mark  who 
either — 

(a)  Without  the  assent  of  the  proprietor  of  the  trade  mark 
makes  that  trade  mark,  or  a  mark  so  nearly  resembling  that 
trade  mark,  as  to  be  calculated  to  deceive ;  or 

(b)  Falsifies  any  genuine  trade  mark,  whether  by  altera- 
tion, addition,  effacement  or  otherwise; 

and  any  trade  mark  or  marks  so  made  or  falsified,  is  in  this 
chapter  referred  to  as  a  forged  trade  mark:  Provided  that  in 
any  prosecution  for  forging  a  trade  mark,  the  burden  of  proving 
the  assent  of  the  proprietor  shall  lie  on  the  defendant. 

4.  (1)  A  person  shall  be  deemed  to  apply  a  trade  mark, 
or  mark  or  trade  description  to  goods,  who — 

(a)  Applies  it  to  the  goods  themselves;  or 

(b)  Applies  it  to  any  covering,  label,  reel  or  other  thing 
in  or  with  which  the  goods  are  sold  or  exposed,  or  had  in  pos- 
session for  any  purpose  of  sale,  trade  or  manufacture ;  or 

(c)  Places,  encloses  or  annexes  any  goods  which  are  sold 
or  exposed,  or  had  in  possession  for  any  purpose  of  sale,  trade 
or  manufacture,  in,  with  or  to  any  covering,  label,  reel  or  other 
thing  to  which  a  trade  mark  or  trade  description  has  been  ap- 
plied; or 

(d)  Uses  a  trade  mark,  or  mark,  or  trade  description  in 
any  manner  calculated  to  lead  to  the  belief  that  the  goods  in 
connection  with  which  it  is  used  are  designated  or  described  by 
that  trade  mark  or  trade  description. 

(2)  The  expression  " covering"  includes  any  stopper,  cask, 
bottle,  vessel,  box,  cover,  capsule,  case,  frame  or  wrapper;  and 
the  expression  "label"  includes  any  band  or  ticket. 

A  trade  mark,  or  mark,  or  trade  description,  shall  be  deemed 
to  be  applied  whether  it  is  woven,  impressed,  or  otherwise 
worked  into,  or  annexed  or  affixed  to  the  goods,  or  to  any  cover- 
ing, label,  reel  or  other  thing. 

(3)  A  person  shall  be  deemed  to  falsely  apply  to  goods  a 
trade  mark  or  marks,  who,  without  the  assent  of  the  proprietor 
of  a  trade  mark,  applies  such  trade  mark,  or  a  mark  so  nearly 
resembling  it  as  to  be  calculated  to  deceive;  but  in  any  prose- 
cution for  falsely  applying  a  trade  mark  or  mark  to  goods,  the 
burden  of  proving  the  assent  of  the  proprietor  shall  lie  on  the 
defendant. 

5.  Where  a  defendant  is  charged  with  making  any  die, 
block,  machine  or  other  instrument  for  the  purpose  of  forging 
or  being  used  for  forging  a  trade  mark,  or  with  falsely  applying 


636  NEWFOUNDLAND 

to  goods  any  trade  mark,  or  any  mark  so  nearly  resembling  a 
trade  mark  as  to  be  calculated  to  deceive,  or  with  applying  to 
goods  any  false  trade  description,  or  causing  any  of  the  things 
in  this  section  mentioned  to  be  done,  and  proves — 

(a)  That  in  the  ordinary  course  of  his  business  he  is  em- 
ployed on  behalf  of  other  persons  to  make  dies,  blocks,  machines, 
or  other  instruments  for  making,  or  being  used  in  making  trade 
marks,  or,  as  the  case  may  be,  to  apply  marks  or  descriptions 
to  goods,  and  that  in  the  case  which  is  a  subject  of  the  charge 
he  was  so  employed  by  some  person  resident  in  Newfoundland, 
and  was  not  interested  in  the  goods  by  way  of  profit  or  com- 
mission dependent  on  the  sale  of  such  goods ;  and 

(b)  That  he  took  reasonable  precautions  against  commit- 
ting the  offence  charged;  and 

(c)  That  he  had,  at  the  time  of  the  commission  of  the  al- 
leged offence,  no  reason  to  suspect  the  genuineness  of  the  trade 
mark,  mark  or  trade  description;  and 

(d)  That  he  gave  to  the  prosecutor  all  the  information  in 
his  power  with  respect  to  the  persons  on  whose  behalf  the  trade 
mark,  mark,  or  description  was  applied, 

he  shall  be  discharged  from  the  prosecution,  but  shall  be  liable 
to  pay  the  costs  incurred  by  the  prosecutor,  unless  he  has  given 
due  notice  to  him  that  he  will  rely  on  the  above  defence. 

6.  Where  a  watch  case  has  thereon  any  words  or  marks 
which  constitute,  or  are  by  common  repute  considered  as  con- 
stituting a  description  of  the  country  in  which  the  watch  was 
made  and  the  watch  bears  no  description  of  the  country  where 
it  was  made,  those  words  or  marks  shall  prima  facie  be  deemed 
to  be  a  description  of  that  country  within  the  meaning  of  this 
chapter,  and  the  provisions  of  this  chapter  with  respect  to 
goods  to  which  a  false  trade  description  has  been  applied,  and 
with  respect  to  selling  or  exposing  for,  or  having  in  possession 
for  sale,  or  any  purpose  of  trade  or  manufacture,  goods  with  a 
false  trade  description,  shall  apply  accordingly,  and  for  the 
purpose  of  this  section  the  expression  " watch"  means  all  that 
portion  of  a  watch  which  is  not  the  watch  case. 

7.  In  any  indictment,  pleading,  proceeding  or  document  in 
which  any  trade  mark  or  forged  trade  mark  is  intended  to  be 
mentioned,  it  shall  be  sufficient,  without  further  description  and 
without  any  copy  or  facsimile,  to  state  that  trade  mark  or  forged 
trade  mark  to  be  a  trade  mark  or  forged  trade  mark. 

8.  In  any  prosecution  for  an  offence  against  this  chapter — 
(1)  A  defendant  and  his  wife,  or  her  husband,  as  the  case 

may  be,  may  if  the  defendant  thinks  fit  be  called  as  a  witness, 
and,  if  called,  shall  be  sworn  and  examined,  and  may  be  cross- 


NEWFOUNDLAND  637 

examined  and  re-examined  in  like  manner  as  any  other  witness. 
(2)  In  the  case  of  imported  goods,  evidence  of  the  port  of 
shipment  shall  be  prima  facie  evidence  of  the  place  or  country 
in  which  the  goods  were  made  or  produced. 

9.  Any  person  who,  being  within  Newfoundland,  procures, 
counsels,  aids,  abets  or  is  accessory  to  the  commission  without 
Newfoundland  of  any  act  which,  if  committed  in  Newfoundland, 
would  under  this  chapter  be  a  misdemeanor,  shall  be  guilty  of 
that  misdemeanor  as  principal,  and  be  liable  to  be  indicted, 
proceeded  against,  tried  and  convicted  in  any  place  in  New- 
foundland in  which  he  may  be,  as  if  the  misdemeanor  had  been 
there  committed. 

10.  (1)  Where,  upon  information  of  an  offence  against 
this  chapter,  a  Justice  has  issued  either  a  summons  requiring 
the  defendant  charged  by  such  information  to  appear  to  answer 
to  the  same,  or  a  warrant  for  the  arrest  of  such  defendant,  and 
either  the  said  Justice  on  or  after  issuing  the  summons  or  war- 
rant, or  any  other  Justice  is  satisfied  by  information  on  oath 
that  there  is  reasonable  cause  to  suspect  that  any  goods  or 
things,  by  means  of  or  in  relation  to  which  such  offence  has 
been  committed,  are  in  any  house  or  premises  of  the  defendant, 
or  otherwise  in  his  possession,  or  under  his  control  in  any  place, 
such  Justice  may  issue  a  warrant  under  his  hand,  by  virtue  of 
which  it  shall  be  lawful  for  any  constable,  named  or  referred  to 
in  the  warrant,  to  enter  such  house,  premises  or  place  at  any 
reasonable  time  by  day  and  to  search  there  for,  and  seize  and 
take  away,  those  goods  or  things;  and  any  goods  or  things 
seized  under  any  such  warrant  shall  be  brought  before  a  Court 
of  summary  jurisdiction  for  the  purpose  of  its  being  determined 
whether  the  same  are  or  are  not  liable  to  forfeiture  under  this 
chapter. 

(2)  If  the  owner  of  any  goods  or  things  which,  if  the  owner 
thereof  had  been  convicted,  would  be  liable  to  forfeiture  under 
this  chapter,  is  unknown  or  cannot  be  found,  an  information  or 
complaint  may  be  laid  for  the  purpose  only  of  enforcing  such 
forfeiture,  and  a  court  of  summary  jurisdiction  may  cause  notice 
to  be  advertised,  stating  that  unless  cause  is  shown  to  the  con- 
trary at  the  time  and  place  named  in  the  notice,  such  goods  or 
things  will  be  forfeited,  and  at  such  time  and  place  the  Court, 
unless  the  owner  or  any  person  on  his  behalf,  or  other  person 
interested  in  the  goods  or  things,  shows  cause  to  the  contrary, 
may  order  such  goods  or  things,  or  any  of  them,  to  be  forfeited. 

(3)  Any  goods  or  things  forfeited  under  this  section,  or 
under  any  other  provision  of  this  chapter,  may  be  destroyed  or 
otherwise  disposed  of  in  such  manner  as  the  Court  by  which 


638  NEWFOUNDLAND 

the  same  are  forfeited  may  direct,  and  the  Court  may,  out  of 
any  proceeds  which  may  be  realised  by  the  disposition  of  such 
goods  (all  trade  marks  and  trade  descriptions  being  first  ob- 
literated), award  to  any  innocent  party  any  loss  he  may  have 
innocently  sustained  in  dealing  with  such  goods. 

11.  The  Imperial  act  of  the  session  of  the  twenty-second 
and  twenty-third  years  of  the  reign  of  her  present  Majesty, 
chapter  seventeen,  entitled  "An  Act  to  prevent  vexatious  in- 
dictments for  certain  misdemeanors, ' '  shall  apply  to  any  offence 
punishable  on  indictment  under  this  chapter  in  like  manner  as 
if  such  offence  were  one  of  the  offences  specified  in  section  one 
of  that  act. 

12.  On  any  prosecution  under  this  chapter,  the  Court  may 
order  costs  to  be  paid  to  the  defendant  by  the  prosecutor,  or  to 
the  prosecutor  by  the  defendant,  having  regard  to  the  informa- 
tion given  by  and  the  conduct  of  the  defendant  and  prosecutor 
respectively. 

13.  No  prosecution  for  an  offence  against  this  chapter 
shall  be  commenced  after  the  expiration  of  three  years  next 
after  the  commission  of  the  offence,  or  one  year  next  after  the 
discovery  thereof  by  the  prosecutor,  whichever  expiration  first 
happens. 

14.  Whereas  it  is  expedient  to  make  further  provision  for 
prohibiting  the  importation  of  goods  which  if  sold  would  be 
liable  to  forfeiture  under  this  chapter;  be  it  therefore  enacted 
as  follows: 

(1)  All  such  goods,  and  also  all  goods  of  foreign  manu- 
facture, bearing  any  name  or  trade  mark  being  or  purporting 
to  be  the  name  or  trade  mark  of  any  manufacturer,  dealer  or 
trader  in  the  United  Kingdom  or  Newfoundland,  unless  such 
name  or  trade  mark  is  accompanied  by  a  definite  indication  of 
the  country  in  which  the  goods  were  made  or  produced,  are 
hereby  prohibited  to  be  imported  into  Newfoundland,  and  sub- 
ject to  the  provisions  of  this  section  shall  be  included  among 
goods  prohibited  to  be  imported  as  if  they  were  specified  in 
section  105  of  chapter  eight  of  these  consolidated  statutes. 

(2)  Before  detaining  any  such  goods,  or  taking  any  further 
proceedings  with  a  view  to  the  forfeiture  thereof  under  the  law 
relating  to  the  customs,  the  Board  of  Revenue  may  require  the 
regulations  under  this  section,  whether  as  to  information,  se- 
curity, conditions  or  other  matters,  to  be  complied  with,  and 
may  satisfy  themselves  in  accordance  with  those  regulations 
that  the  goods  are  such  as  are  prohibited  by  this  section  to  be 
imported. 


NEWFOUNDLAND  639 

(3)  The  Board  of  Revenue  may  from  time  to  time  make, 
revoke  and  vary  regulations,  either  general  or  special,  respect- 
ing the  detention  and  forfeiture  of  goods,  the  importation  of 
which  is  prohibited  by  this  section,  and  the  conditions,  if  any, 
to  be  fulfilled  before  such  detention  and  forfeiture,  and  may  by 
such  regulations  determine  the  information,  notices  and  security 
to  be  given,  and  the  evidence  requisite  for  any  of  the  purposes 
of  this  section,  and  the  mode  of  verification  of  such  evidence. 

(4)  Where  there  is  on  any  goods  a  name  which  is  identical 
with  or  a  colourable  imitation  of  the  name  of  a  place  in  the 
United  Kingdom  or  Newfoundland,  that  name,  unless  accom- 
panied by  the  name  of  the  country  in  which  such  place  is  situate, 
shall  be  treated  for  the  purposes  of  this  section  as  if  it  were 
the  name  of  a  place  in  Newfoundland. 

(5)  Such  regulations  may  apply  to  all  goods,  the  importa- 
tion of  which  is  prohibited  by  this  section,  or  different  regula- 
tions may  be  made  respecting  different  classes  of  such  goods, 
or  of  offences  in  relation  to  such  goods. 

(6)  The  Board  of  Revenue  in  making  and  administering 
the  regulations,  and  generally  in  the  administration  of  this  sec- 
tion, whether  in  the  exercise  of  any  discretion  or  opinion,  or 
otherwise,  shall  act  under  the  control  of  the  Governor  in  Council. 

(7)  The  regulations  may  provide  for  the  informant  reim- 
bursing the  Board  of  Revenue  all  expenses  and  damages  in- 
curred in  respect  of  any  detention  made  on  his  information, 
and  of  any  proceedings  consequent  on  such  detention. 

(8)  All  regulations  under  this  subject  shall  be  published 
in  the  Royal  Gazette. 

(9)  This  section  shall  have  effect  as  if  it  were  part  of  chap- 
ter eight  of  these  consolidated  statutes. 

15.  On  the  sale,  or  in  the  contract  for  the  sale,  of  any 
goods  to  which  a  trade  mark,  or  mark,  or  trade  description,  has 
been  applied,  the  vendor  shall  be  deemed  to  warrant  that  the 
mark  is  a  genuine  trade  mark  and  not  forged  or  falsely  applied, 
or  that  the  trade  description  is  not  a  false  trade  description 
within  the  meaning  of  this  chapter,  unless  the  contrary  is  ex- 
pressed in  some  writing  signed  by  or  on  behalf  of  the  vendor 
and  delivered  at  the  time  of  the  sale  or  contract  to  and  accepted 
by  the  vendee. 

16.  Where  at  the  passing  of  this  chapter  a  trade  descrip- 
tion is  lawfully  and  generally  applied  to  goods  of  a  particular 
class,  or  manufactured  by  a  particular  method,  to  indicate  the 
particular  class  or  method  of  manufacture  of  such  goods,  the 
provisions  of  this  chapter  with  respect  to  false  trade  descrip- 
tions shall  not  apply  to  such  trade  descriptions  when  so  applied : 


640  NEWFOUNDLAND 

Provided  that  where  such  trade  description  includes  the  name 
of  a  place  or  country,  and  is  calculated  to  mislead  as  to  the 
place  or  country  where  the  goods  to  which  it  is  applied  were 
actually  made  or  produced,  and  the  goods  are  not  actually  made 
or  produced  in  that  place  or  country,  this  section  shall  not 
apply  unless  there  is  added  to  the  trade  description,  immediately 
before  or  after  the  name  of  that  place  or  country,  in  an  equally 
conspicuous  manner  with  that  name,  the  name  of  the  place  or 
country  in  which  the  goods  were  actually  made  or  produced, 
with  a  statement  that  they  were  made  or  produced  there. 

17.  (1)  This  chapter  shall  not  exempt  any  person  from 
any  action,  suit  or  other  proceeding  which  might,  but  for  the 
provisions  of  this  chapter,  be  brought  against  him. 

(2)  Nothing  in  this  chapter  shall  entitle  any  person  to  re- 
fuse to  make  a  complete  discovery,  or  to  answer  any  question 
or  interrogatory  in  any  action,  but  such  discovery  or  answer 
shall  not  be  admissible  in  evidence  against  such  person  in  any 
prosecution  for  an  offence  against  this  chapter. 

(3)  Nothing  in  this  chapter  shall  be  construed  so  as  to 
render  liable  to  any  prosecution  or  punishment  any  servant  of 
a  master  resident  in  Newfoundland  who  ~bona  fide  acts  in  obe- 
dience to  the  instructions  of  such  master,  and,  on  demand  made 
by  or  on  behalf  of  the  prosecutor,  has  given  full  information  as 
to  his  master. 

18.  Any  person  who  falsely  represents  that  any  goods 
are  made  by  a  person  holding  a  royal  warrant,  or  for  the  service 
of  Her  Majesty,  or  any  of  the  royal  family,  or  any  government 
department,  shall  be  liable  on  summary  conviction  to  a  penalty 
not  exceeding  one  hundred  dollars. 

19.  A  register  of  trade  marks  shall  be  kept  at  the  office 
of  the  Colonial  Secretary,  in  which  any  proprietor  of  a  trade 
mark  may  have  the  same  registered  on  complying  with  the  pro- 
visions of  this  chapter. 

20.  (1)  For  the  purposes  of  this  chapter,  a  trade  mark 
must  consist  of  or  contain  at  least  one  of  the  following  essential 
particulars : 

(a)  A  name  of  an  individual  or  firm  printed,  impressed  or 
woven  in  some  particular  and  distinctive  manner ;  or 

(b)  A  written  signature  or  copy  of  a  written  signature  of 
the  individual  or  firm  applying  for  registration  thereof  as  a 
trade  mark;  or 

(c)  A  distinctive  device,  mark,  brand,  heading,  label  or 
ticket;  or 

(d)  An  invented  word  or  invented  words;  or 

(e)  A  word  or  words  having  no  reference  to  the  character 


NEWFOUNDLAND  641 

or  quality  of  the  goods,  and  not  being  a  geographical  name. 

(2)  There  may  be  added  to  any  one  or  more  of  the  essential 
particulars  mentioned    in    this  section  any  letters,  words  or 
figures,  or  of  any  of  them;  but  the  applicant  for  registration 
of  any  such  additional  matter  must  state  in  his  application  the 
essential  particulars  of  the  trade  mark,  and  must  disclaim  in 
his  application  any  right  to  the  exclusive  use  of  the  added  mat- 
ter, and  a  copy  of  the  statement  and  disclaimer  shall  be  entered 
on  the  register. 

(3)  Provided  as  follows: 

(a)  A  person  need  not  under  this  section  disclaim  his  own 
name  or  the  foreign  equivalent  thereof,  or  his  place  of  business ; 
but  no  entry  of  any  such  name  shall  affect  the  right  of  any 
owner  of  the  same  name  to  use  that  name  or  the  foreign  equiva- 
lent thereof; 

(b)  Any  special  and  distinctive  word  or  words,  letter,  figure 
or  combination  of  letters  or  figures,  or  of  letters  and  figures 
used  as  a  trade  mark  before  the  coming  into  force  of  these  con- 
solidated statutes,  may  be  registered  as  a  trade  mark  under 
this  chapter. 

21.  A  trade  mark  must  be  registered  for  particular  goods 
or  classes  of  goods. 

22.  A  trade  mark  may  be  registered  in  any  colour  or 
colours,  and  such  registration  shall,  subject  to  the  provisions 
of  this  chapter,  confer  on  the  registered  owner  the  exclusive 
right  to  use  the  same  in  that  or  any  other  colour  or  colours. 

23.  The  Colonial  Secretary,  subject  to  the  approval  of  the 
Governor  in  Council,  may  make  rules  and  regulations,  and  adopt 
forms  for  the  purposes  of  this  chapter  as  respects  trade  marks, 
and  all  documents  executed  according  to  the  same,  and  accepted 
by  the  Colonial  Secretary,  shall  be  deemed  to  be  valid  so  far  as 
relates  to  official  proceedings  under  this  chapter. 

24.  The  proprietor  of  a  trade  mark  may  have  it  registered 
on  forwarding  to  the  Colonial  Secretary,  together  with  the  fee 
hereinafter  mentioned,  a  drawing  and  description  in  duplicate 
of  such  trade  mark,  and  a  declaration  that  the  same  was  not  in 
use  to  his  knowledge  by  any  other  person  than  himself  at  the 
time  of  his  adoption  thereof. 

25.  (1)  Before  any  action  is  taken  in  relation  to  an  ap- 
plication for  registering  a  trade  mark,  the  following  fees  shall 
be  paid  to  the  Colonial  Secretary,  that  is  to  say: 

On  every  application  to  register  a  trade  mark,  including 
certificate,  $20.00 ;  for  the  recording  of  an  assignment,  $1.00. 

Such  fees  to  be  paid  by  the  Colonial  Secretary  to  the  Re- 
ceiver General  for  the  use  of  the  colony. 


642  NEWFOUNDLAND 

(2)  If  the  Colonial  Secretary  refuses  to  register  the  trade 
mark  for  which  application  is  made,  the  fee  shall  be  returned  to 
the  applicant  or  his  agent,  less  five  dollars,  which  shall  be  re- 
tained as  compensation  for  office  expenses. 

26.  The  Colonial  Secretary  may  object  to  register  any 
trade  mark  in  the  following  cases : 

(1)  If  the  trade  mark  proposed  for  registration  is  identical 
with  or  resembles  a  trade  mark  already  registered. 

(2)  If  it  appears  that  the  trade  mark  is  calculated  to  de- 
ceive or  mislead  the  public. 

(3)  If  the  trade  mark  contains  any  immorality  or  scan- 
dalous figure. 

(4)  If  the  so-called  trade  mark  does  not  contain  the  essen- 
tials necessary  to  constitute  a  trade  mark  properly  speaking. 

27.  On  compliance  with  the  requirements  of  this  chapter, 
and  of  the  rules  hereinbefore  provided  for,  the  Colonial  Secre- 
tary shall  register  the  trade  mark  of  the  proprietor  so  applying, 
and  shall  return  to  the  said  proprietor  one  copy  of  the  drawing 
and  description  with  a  certificate,  signed  by  the  Colonial  Sec- 
retary, to  the  effect  that  the  said  trade  mark  has  been  duly 
registered  in  accordance  with  the  provisions  of  this  chapter; 
and  the  day,  month  and  year  of  the  entry  of  the  trade  mark  in 
the  register  shall  also  be  set  forth  in  such  certificate ;  and  every 
such  certificate  purporting  to  be  so  signed  shall  be  received  in 
all  courts  in  Newfoundland  as  prima  facie  evidence  of  the  fact 
therein  alleged  without  proof  of  the  signature. 

28.  A  trade  mark  once  registered  and  destined  to  be  the 
sign  in  trade  of  the  proprietor  thereof  shall  endure  without 
limitation. 

29.  Every  trade  mark  duly  registered  shall  be  assignable 
in  law,  and  on  the  assignment  being  produced,  and  the  fee  here- 
inbefore prescribed  being  paid,  the  Colonial  Secretary  shall 
cause  the  name  of  the  assignee,  with  the  date  of  the  assignment 
and  such  other  details  as  he  shall  see  fit,  to  be  entered  on  the 
margin  of  the  register  of  trade  marks,  on  the  folio  where  such 
trade  mark  is  registered. 

30.  Every  person,  other  than  the  person  who  has  regis- 
tered the  trade  mark,  who  marks  any  goods,  or  any  article  of 
any  description  whatsoever,  with  any  trade  mark  registered 
under  the  provisions  of  this  chapter,  or  with  any  part  of  such 
trade  mark,  whether  by  applying  such  trade  mark,  or  any  part 
thereof,  to  the  article  itself,  or  to  any  package  or  thing  con- 
taining such  article,  or  by  using  any  package  or  thing  so  marked 
which  has  been  used  by  the  proprietor  of  such  trade  mark,  or 
who  knowingly  sells  or  offers  for  sale  any  article  marked  with 


NEWFOUNDLAND  643 

such  trade  mark,  or  with  any  part  thereof,  with  the  intent  to 
deceive  and  to  induce  any  person  to  believe  that  such  article 
was  manufactured,  produced,  compounded,  packed  or  sold  by 
the  proprietor  of  such  trade  mark,  is  guilty  of  a  misdemeanor 
and  liable  for  each  offence  to  a  fine  not  exceeding  one  hundred 
dollars  and  not  less  than  twenty  dollars,  which  fine  shall  be 
paid  to  the  proprietor  of  such  trade  mark,  together  with  the 
cost  incurred  in  enforcing  and  recovering  the  same. 

(1)  Every  complaint  under  this  section  shall  be  made  by 
the  proprietor  of  such  trade  mark,  or  by  someone  acting  on  his 
behalf  and  thereunto  duly  authorised. 

31.  An  action  or  suit  may  be  maintained  by  any  proprietor 
of  a  trade  mark,  which  has  been  registered  in  pursuance  of  this 
chapter,  against  any  person  who  uses  his  registered  trade  mark, 
or  any  fraudulent  imitation  thereof,  or  who  sells  any  article 
bearing  such  trade  mark  or  any  such  imitation  thereof,  or  con- 
tained in  any  package,  being  or  purporting  to  be  his,  contrary 
to  the  provisions  of  this  chapter. 


NEW  ZEALAND 

LAW  NO.  18  OF  JANUARY  13,  1922,  EFFECTIVE 
JULY  1, 1922* 

Short  Title  and  commencement 

1.  This  Act  may  be  cited  as  the  Patents,  Designs,  and 
Trade  Marks  Act.  1921-22,  and  shall  come  into  operation  on  the 
first  day  of  July,  nineteen  hundred  and  twenty-two. 

Interpretation 

2.  In  this  Act,  unless  a  contrary  intention  appears, — 

•  *••**•*•• 

" Court"  means  the  Supreme  Court: 

"Mark"  includes  a  device,  brand,  heading,  label,  ticket, 
name,  signature,  word,  letter,  numeral,  or  any  combination 
thereof : 

•  ••••••••• 

"  Register "  means  the  Register  of  Patents,  or  the  Register 
of  Designs,  or  the  Register  of  Trade  Marks,  as  the  context  may 
require,  under  this  Act : 

"Registered  trade  mark"  means  a  trade  mark  which  is 
actually  upon  the  Register: 

"Registrable  trade  mark"  means  a  trade  mark  which  is 
capable  of  registration  under  the  provisions  of  this  Act: 

"Registrar"  means  the  Registrar  of  Patents,  Designs,  and 
Trade  Marks: 

"Trade  mark"  means  a  mark  used  or  proposed  to  be  used 
upon  or  in  connection  with  goods  for  the  purpose  of  indicating 
that  they  are  the  goods  of  the  proprietor  of  that  trade  mark 
by  virtue  of  manufacture,  selection,  certification,  dealing  with, 
or  offering  for  sale. 

•  ••••••••* 

PART  in 
TRADE  MARKS 

REGISTER  OF  TRADE  MARKS 

67.  (1)  There  shall  be  kept  at  the  Patent  Office  a  book 
called  the  Register  of  Trade  Marks,  wherein  shall  be  entered 

*  Matter  not  relating  to  Trade  Marks  is  omitted. 


NEW  ZEALAND  645 

all  registered  trade  marks,  with  the  names  and  addresses  of 
their  proprietors,  notifications  of  assignments  and  transmis- 
sions, disclaimers,  conditions,  limitations,  and  such  other  mat- 
ters relating  to  registered  trade  marks  as  may  be  prescribed. 

(2)  The  Register  of  Trade  Marks  existing  at  the  commence- 
ment of  this  Act  shall  be  incorporated  with  and  form  part  of 
the  Register  of  Trade  Marks  under  this  Act. 

(3)  Subject  to  the  provisions  of  section  one  hundred  and 
section  one  hundred  and  six  of  this  Act,  the  validity  of  the  orig- 
inal entry  of  any  trade  mark  upon  the  Register  so  incorporated 
shall  be  determined  in  accordance  with  the  statutes  in  force  at 
the  date  of  that  entry,  and  any  such  trade  mark  shall  retain  its 
original  date,  but  for  all  other  purposes  shall  be  deemed  to  be 
a  trade  mark  registered  under  this  Act. 

Division  of  Register  of  Trade  Marks  into  two  parts 

68.  (1)  The  Register  of  Trade  Marks  shall  be  divided  into 
two  parts,  to  be  called  respectively  Part  A  and  Part  B. 

(2)  Part  A  of  the  Register  shall  comprise  all  trade  marks 
entered  in  the  Register  of  Trade  Marks  at  the  commencement 
of  this  Act,  and  all  trade  marks  which  after  the  commencement 
of  this  Act  may  be  registered  otherwise  than  under  the  pro- 
visions of  section  eighty  hereof. 

(3)  Part  B  of  the  Register  shall  comprise  all  trade  marks 
registered  under  section  eighty  of  this  Act,  and  all  trade  marks 
entered  on  or  removed  thereto  under  this  Act. 

REGISTKABLE  TRADE  MARKS 
Trade  mark  must  be  for  particular  goods 

69.  A  trade  mark  must  be  registered  in  respect  of  particu- 
lar goods  or  classes  of  goods. 

70.  (1)  A  registrable  trade  mark  must  contain  or  consist 
of  at  least  one  of  the  following  essential  particulars : — 

(a)  The  name  of  a  company,  individual,  or  firm  represented 
in  a  special  or  particular  manner : 

(b)  The  signature  of  the  applicant  for  registration,  or  some 
predecessor  in  his  business : 

(c)  An  invented  word  or  invented  words: 

(d)  A  word  or  words  having  no  direct  reference  to  the 
character  or  quality  of  the  goods,  and  not  being,  according  to 
its  ordinary  signification,  a  geographical  name  or  a  surname: 

(e)  Any  other  distinctive  mark;  but  a  name,  signature,  or 
word  or  words,  other  than  such  as  fall  within  the  descriptions 
in  the  preceding  paragraphs  (a),  (b),  (c),  and  (d),  shall  not 
be  registrable  under  the  provisions  of  this  paragraph  except 
upon  evidence  of  its  distinctiveness : 


646  NEW  ZEALAND 

Provided  that  any  special  or  distinctive  word  or  words, 
letter,  numeral,  or  combination  of  letters  or  numerals  used  as 
a  trade  mark  by  the  applicant  or  his  predecessors  in  business 
before  the  first  day  of  January,  eighteen  hundred  and  ninety, 
which  has  continued  to  be  used  (either  in  its  original  form  or 
with  additions  or  alterations  not  substantially  affecting  its 
identity)  down  to  the  date  of  the  application  for  registration 
shall  be  registrable  as  a  trade  mark  under  this  Act. 

(2)  For  the  purposes  of  this  section  "distinctive"  means 
adapted  to  distinguish  the  goods  of  the  proprietor  of  the  trade 
mark  from  those  of  other  persons. 

(3)  In  determining  whether  a  trade  mark  is  so  adapted  any 
tribunal  may,  in  the  case  of  a  trade  mark  in  actual  use,  take  into 
consideration  the  extent  to  which  that  user  has  rendered  the 
trade  mark  in  fact  distinctive  for  the  goods  with  respect  to 
which  it  is  registered  or  proposed  to  be  registered. 

Coloured  trade  marks 

71.  A  trade  mark  may  be  limited  in  whole  or  in  part  to 
one  or  more  specified  colours,  and  in  such  case  the  fact  that  it 
is  so  limited  shall  be  taken  into  consideration  by  any  tribunal 
having  to  decide  on  the  distinctive  character  of  that  trade  mark. 
If  and  so  far  as  a  trade  mark  is  registered  without  limitation 
of  colour  it  shall  be  deemed  to  be  registered  for  all  colours. 

Restriction  on  registration 

72.  It  shall  not  be  lawful  to  register  as  a  trade  mark  or 
part  of  a  trade  mark  any  scandalous  design,  or  any  matter  the 
use  of  which  would  by  reason  of  its  being  calculated  to  deceive 
or  otherwise  be  disentitled  to  protection  in  a  Court  of  justice. 

REGISTRATION  OF  TRADE  MARKS  IN  PART  A  OF  REGISTER 
Application  for  registration 

73.  (1)  Any  person  claiming  to  be  the  proprietor  of  a 
trade  mark  who  is  desirous  of  registering  the  same  must  apply 
in  writing  to  the  Registrar  in  the  prescribed  manner. 

(2)  Subject  to  the  provisions  of  this  Act  the  Registrar  may 
refuse  the  application,  or  may  accept  it  absolutely  or  subject  to 
conditions,  amendments,  or  modifications,  or  to  such  limitations 
(if  any)  as  to  mode  or  place  of  user  or  otherwise  as  he  may  think 
right  to  impose. 

(3)  In  case  of  any  such  refusal  or  conditional  acceptance 
the  Registrar  shall,  if  required  by  the  applicant,  state  in  writ- 
ing the  grounds  of  his  decision  and  the  materials  used  by  him  in 
arriving  at  the  same ;  and  the  decision  shall  be  subject  to  appeal 
to  the  Court. 

(4)  On  any  such  appeal  the  Court  may  hear  the  applicant 


NEW  ZEALAND  647 

and  the  Registrar,  and  may  make  an  order  determining  whether 
and  subject  to  what  conditions,  amendments,  or  modifications, 
if  any,  or  to  what  limitations  (if  any)  as  to  mode  or  place  of 
user  or  otherwise,  the  application  is  to  be  accepted. 

(5)  Appeals  under  this  section  shall  be  heard  on  the  ma- 
terials so  stated  by  the  Registrar  to  have  been  used  by  him  in 
arriving  at  his  decision,  and  no  further  grounds  of  objection  to 
the  acceptance  of  the  application  shall  be  allowed  to  be  taken 
by  the  Registrar  other  than  those  stated  by  him,  except  by  leave 
of  the  Court.     Where  any  further  grounds  of  objection  are 
taken,  the  applicant  shall,  subject  to  rules  of  Court,  be  entitled 
to  withdraw  his  application  without  payment  of  costs. 

(6)  The  Registrar  or  the  Court,  as  the  case  may  be,  may 
at  any  time,  whether  before  or  after  acceptance,  correct  any 
error  in  or  in  connection  with  the  application,  or  may  permit 
the  applicant  to  amend  his  application  upon  such  terms  as  the 
Registrar  or  the  Court  may  think  fit. 

Advertisement  of  application 

74.  When  an  application  for  registration  of  a  trade  mark 
has  been  accepted,  whether  absolutely  or  subject  to  conditions, 
limitations,  amendments,  or  modifications,  the  Registrar  shall, 
as  soon  as  may  be  after  the  acceptance,  cause  the  application 
as  accepted  to  be  advertised.    The  advertisement  shall  set  forth 
all  conditions,  limitations,  amendments,  and  modifications  sub- 
ject to  which  the  application  has  been  accepted: 

Provided  that  an  application  under  the  provisions  of  para- 
graph (e)  of  section  seventy  of  this  Act  may  be  advertised  by 
the  Registrar  on  receipt  of  such  application,  and  before 
acceptance. 

Opposition  to  registration 

75.  (1)  Any  person  may,  within  the  prescribed  time  from 
the  date  of  the  advertisement  of  an  application  for  the  regis- 
tration of  a  trade  mark,  give  notice  to  the  Registrar  of  opposi- 
tion to  the  registration. 

(2)  The  notice  shall  be  given  in  writing  in  the  prescribed 
manner,  and  shall  include  a  statement  of  the  grounds  of  oppo- 
sition. 

(3)  The  Registrar  shall  send  a  copy  of  the  notice  to  the 
applicant;  and  within  the  prescribed  time  after  the  receipt  of 
the  notice  the  applicant  shall  send  to  the  Registrar,  in  the  pre- 
scribed manner,  a  counter-statement  of  the  grounds  on  which 
he  relies  for  his  application,  and  if  he  does  not  do  so  he  shall 
be  deemed  to  have  abandoned  his  application. 

(4)  If  the  applicant  sends  a  counter-statement  the  Regis- 


648  NEW  ZEALAND 

trar  shall  furnish  a  copy  thereof  to  the  persons  giving  notice  of 
the  opposition,  and  shall,  after  hearing  the  parties,  if  so  re- 
quired, and  considering  the  evidence,  decide  whether,  and  sub- 
ject to  what  conditions  (if  any)  or  what  limitations  (if  any) 
as  to  mode  or  place  of  user  or  otherwise,  registration  is  to  be 
permitted. 

(5)  The  decision  of  the  Kegistrar  shall  be  subject  to  appeal 
to  the  Court. 

(6)  On  any  such  appeal  the  Court  may  hear  the  parties 
and    the    Registrar,    and    may   make    an    order    determining 
whether,  and  subject  to  what  conditions  (if  any)  or  what  limita- 
tions (if  any)  as  to  mode  or  place  of  user  or  otherwise,  regis- 
tration is  to  be  permitted. 

(7)  On  the  hearing  of  any  such  appeal  any  party  may, 
either  in  accordance  with  rules  of  Court  or  by  special  leave  of 
the  Court,  bring  forward  further  material  for  the  consideration 
of  the  Court. 

(8)  In  proceedings  under  this  section  no  further  grounds 
of  objection  to  the  registration  of  a  trade  mark  shall  be  allowed 
to  be  taken  by  the  opponent  or  the  Registrar  other  than  those 
stated  by  the  opponent  as  hereinbefore  provided,  except  by 
leave  of  the  Court.    Where  any  further  grounds  of  objection 
are  taken  the  applicant  shall,  subject  to  rules  of  Court,  be  enti- 
tled to  withdraw  his  application  without  payment  of  costs. 

(9)  In  any  appeal  under  this  section  the  Court  may,  after 
hearing  the  Registrar,  permit  the  trade  mark  proposed  to  be 
registered  to  be  modified  in  any  manner  not  substantially  affect- 
ing its  identity,  but  in  such  case  the  trade  mark  as  so  modified 
shall  be  advertised  in  the  prescribed  manner  before  being 
registered. 

(10)  If  a  party  giving  notice  of  opposition  or  of  appeal 
neither  resides  nor  carries  on  business  in  New  Zealand,  the 
Registrar  or  the  Court,  as  the  case  may  be,  may  require  that 
party  to  give  security  for  costs  of  the  proceedings  relative  to 
the  opposition  or  appeal,  and  in  default  of  such  security  being 
duly  given  may  treat  the  opposition  or  appeal  as  abandoned. 

Disclaimers 

76.  If  a  trade  mark  contains  parts  not  separately  regis- 
tered by  the  proprietor  as  trade  marks,  or  if  it  contains  matter 
common  to  the  trade  or  otherwise  of  a  non-distinctive  charac- 
ter, the  Registrar  or  the  Court,  in  deciding  whether  the  trade 
mark  shall  be  entered  or  shall  remain  upon  the  Register,  may 
require,  as  a  condition  of  its  being  upon  the  Register,  that  the 
proprietor  shall  disclaim  any  right  to  the  exclusive  use  of  any 


NEW  ZEALAND  649 

part  or  parts  of  the  trade  mark,  or  of  all  or  any  portion  of  that 
matter,  to  the  exclusive  use  of  which  they  hold  him  not  to  be 
entitled,  or  that  he  shall  make  such  other  disclaimer  as  they 
may  consider  needful  for  the  purpose  of  defining  his  rights 
under  the  registration: 

Provided  that  no  disclaimer  upon  the  Register  shall  affect 
any  rights  of  the  proprietor  of  a  trade  mark  except  such  as  arise 
out  of  the  registration  of  the  trade  mark  in  respect  of  which 
the  disclaimer  is  made. 

Date  of  registration 

77.  When  an  application  for  registration  of  a  trade  mark 
has  been  accepted  and  has  not  been  opposed,  and  the  time  for 
notice  of  opposition  has  expired,  or,  having  been  opposed,  the 
opposition  has  been  decided  in  favour  of  the  applicant,  the  Reg- 
istrar shall,  unless  the  mark  has  been  accepted  in  error  or  unless 
the  Court  otherwise  directs,  register  the  said  trade  mark;  and 
the  trade  mark,  when  registered,  shall  be  registered  as  of  the 
date  of  the  application  for  registration;  and  that  date  shall  be 
deemed  for  the  purposes  of  this  Act  to  be  the  date  of  reg- 
istration. 

Certificate  of  registration 

78.  On  the  registration  of  a  trade  mark  the  Registrar  shall 
issue  to  the  applicant  a  certificate,  in  the  prescribed  form,  of 
the  registration  of  that  trade  mark  under  the  hand  of  the  Regis- 
trar, and  sealed  with  the  seal  of  the  Patent  Office. 

Non-completion  of  registration 

79.  Where  registration  of  a  trade  mark  is  not  completed 
within  twelve  months  from  the  date  of  the  application  by  reason 
of  default  on  the  part  of  the  applicant,  the  Registrar  may,  after 
giving  notice  of  the  non-completion  to  the  applicant  in  writing 
in  the  prescribed  manner,  treat  the  application  as  abandoned 
unless  it  is  completed  within  the  time  specified  in  that  behalf 
in  the  notice. 

REGISTRATION-  OF  TRADE  MARKS  IN  PART  B  OF  REGISTER 

80.  (1)  Where  any  mark  has  for  not  less  than  two  years 
been  bona  fide  used  in  New  Zealand  upon  or  in  connection  with 
any  goods  (whether  for  sale  in  New  Zealand  or  exportation 
abroad)  for  the  purpose  of  indicating  that  they  are  the  goods  of 
the  proprietor  of  the  mark  by  virtue  of  manufacture,  selection, 
certification,  dealing  with,  or  offering  for  sale,  the  person  claim- 
ing to  be  the  proprietor  of  the  mark  may  apply  in  writing  to  the 
Registrar  in  the  prescribed  manner  to  have  the  mark  entered 
as  his  registered  trade  mark  in  Part  B  of  the  Register  in  respect 
of  such  goods. 


650  NEW  ZEALAND 

(2)  The  Registrar  shall  consider  every  such  application 
for  registration  of  a  trade  mark  in  Part  B  of  the  Register; 
and  if  it  appears  to  him,  after  such  search  (if  any)  as  he  may 
deem  necessary,  that  the  application  is  inconsistent  with  the 
provisions  of  section  seventy-two  or  section  eighty-four  or  sec- 
tion one  hundred  and  twenty-six  of  this  Act,  or  if  he  is  not  sat- 
isfied that  the  mark  has  been  so  used  as  aforesaid  or  that  it  is 
capable  of  distinguishing  the  goods  of  the  applicant,  he  may 
refuse  the  application,  or  may  accept  it  subject  to  conditions, 
amendments,  or  modifications  as  to  the  goods  or  classes  of  goods 
in  respect  of  which  the  mark  is  to  be  registered,  or  to  such 
limitations  (if  any)  as  to  mode  or  place  of  user  or  otherwise 
as  he  may  think  right  to  impose,  and  in  any  other  case  he  shall 
accept  the  application. 

(3)  Every  such  application  shall  be  accompanied  by  a 
statutory  declaration  verifying  the  user,  including  the  date  of 
first  user,  and  such  date  shall  be  entered  on  the  Register. 

(4)  Any  such  refusal  or  conditional  acceptance  shall  be 
subject  to  appeal  to  the  Court ;  and,  if  the  ground  for  refusal  is 
insufficiency  of  evidence  as  to  user,  such  refusal  shall  be  with- 
out prejudice  to  any  application  for  registration  of  the  trade 
mark  in  Part  A  of  the  Register. 

(5)  Every  such  application  shall,  if  accepted,  be  advertised 
in  accordance  with  the  provisions  of  this  Act  as  to  applications 
for  registration  in  Part  A. 

(6)  A  mark  may  be  registered  in  Part  B  notwithstanding 
any  registration  in  Part  A  by  the  same  proprietor  of  the  same 
mark  or  any  part  or  parts  thereof. 

Provisions  applicable  to  trade  marks  in  Part  B 

81.  The  provisions  of  this  Part  of  this  Act,  with  the  excep- 
tion of  those  set  out  in  the  First  Schedule  hereto,  shall,  except 
as  otherwise  provided  herein,  apply  in  respect  of  trade  marks 
registered  or  registrable  in  Part  B  of  the  Register. 

Effect  of  registration  in  Part  B 

82.  The  registration  of  a  person  as  the  proprietor  of  a 
trade  mark  in  Part  B  of  the  Register  shall  be  prima  facie  evi- 
dence that  that  person  has  the  exclusive  right  to  the  use  of  that 
trade  mark ;  but,  in  any  action  for  infringement  of  a  trade  mark 
entered  in  Part  B  of  the  Register,  no  injunction  or  other  relief 
shall  be  granted  to  the  owner  of  the  trade  mark  in  respect  of 
such  registration  if  the  defendant  establishes  to  the  satisfaction 
of  the  Court  that  the  user  of  which  the  plaintiif  complains  is 
not  calculated  to  deceive  or  to  lead  to  the  belief  that  the  goods 
the  subject  of  such  user  were  goods  manufactured,  selected, 


NEW  ZEALAND  651 

certified,  dealt  with,  or  offered  for  sale  by  the  proprietor  of  the 
trade  mark. 

Power  to  treat  applications  for  registration  in  Part  A  as 
applications  for  registration  in  Part  B 

83.  If  any  person  applies  for  the  registration  of  a  trade 
mark  in  Part  A  of  the  Register,  the  Registrar  may,  if  the  appli- 
cant is  willing,  instead  of  refusing  the  application,  treat  it  as 
an  application  for  registration  in  Part  B  of  the  Register,  and 
deal  with  the  application  accordingly. 

IDENTICAL  TRADE  MARKS 

84.  Except  by  order  of  the  Court  or  Registrar  or  in  the 
case  of  trade  marks  in  use  before  the  first  day  of  January, 
eighteen  hundred  and  ninety,  no  trade  mark  shall  be  registered 
in  respect  of  any  goods  or  description  of  goods  which  is  identi- 
cal with  one  belonging  to  a  different  proprietor  which  is  already 
on  the  Register  with  respect  to  such  goods  or  description  of 
goods,  or  so  nearly  resembling  such  a  trade  mark  as  to  be  calcu- 
lated to  deceive. 

Rival  claims  to  identical  marks 

85.  Where  each  of  several  persons  claims  to  be  proprietor 
of  the  same  trade  mark,  or  of  nearly  identical  trade  marks,  in 
respect  of  the  same  goods  or  description  of  goods,  and  to  be 
registered  as  such  proprietor,  the  Registrar  may  refuse  to 
register  any  of  them  until  their  rights  have  been  determined 
by  the  Court  or  have  been  settled  by  agreement  in  a  manner 
approved  by  him. 

Concurrent  user 

86.  In  case  of  honest  concurrent  user  or  of  other  special 
circumstances  which  in  the  opinion  of  the  Court  or  Registrar 
make  it  proper  so  to  do,  the  Court  or  Registrar  may  permit  the 
registration  of  the  same  trade  mark,  or  of  nearly  identical  trade 
marks,  for  the  same  goods  or  description  of  goods  by  more  than 
one  proprietor,  subject  to  such  conditions  and  limitations  (if 
any)  as  to  mode  or  place  of  user  or  otherwise  as  the  Court  or 
the  Registrar,  as  the  case  may  be,  may  think  it  right  to  impose. 

ASSIGNMENT 
Assignment  and  transmission  of  trade  marks 

87.  A  trade  mark,  when  registered,  shall  be  assigned  and 
transmitted  only  in  connection  with  the  goodwill  of  the  business 
concerned  in  the  goods  for  which  it  has  been  registered,  and 
shall  be  determinable  with  that  goodwill.    But  nothing  in  this 
section  shall  be  deemed  to  affect  the  right  of  the  proprietor  of 
a  registered  trade  mark  to  assign  the  right  to  use  the  same  in 
the  United  Kingdom,  or  in  any  British  possession  or  protec- 


652  NEW  ZEALAND 

torate  or  foreign  country,  in  connection  with  any  goods  for 
which  it  is  registered  together  with  the  goodwill  of  the  business 
therein  those  goods;  and  the  assignment  of  such  right  to  use 
the  same  shall  constitute  the  assignee  a  proprietor  of  a  separate 
trade  mark  for  the  purpose  of  the  last  preceding  section,  sub- 
ject to  such  conditions  and  limitations  as  may  be  imposed  under 
that  section. 

Apportionment  of  marks  on  dissolution  of  partnership 

88.  In  any  case  where  from  any  cause,  whether  by  reason 
of  dissolution  of  partnership  or  otherwise,  a  person  ceases  to 
carry  on  business,  and  the  goodwill  of  that  person  does  not  pass 
to  one  successor  but  is  divided,  the  Registrar  may  (subject  to 
the  provisions  of  this  Act  as  to  associated  trade  marks),  on  the 
application  of  the  parties  interested,  permit  an  apportionment 
of  the  registered  trade  marks  of  that  person  among  the  persons 
in  fact  continuing  the  business,  subject  to  such  conditions  and 
modifications  (if  any),  and  to  such  limitations  (if  any)  as  to 
mode  or  place  of  user,  as  he  may  think  necessary  in  the  public 
interest.    Any  decision  of  the  Registrar  under  this  section  shall 
be  subject  to  appeal  to  the  Court. 

ASSOCIATED  TRADE  MARKS 

89.  If  application  is  made  for  the  registration  of  a  trade 
mark  identical  with  or  so  closely  resembling  a  trade  mark  of 
the  applicant  already  on  the  Register  for  the  same  goods  or 
description  of  goods  as  to  be  calculated  to  deceive  or  cause  con7 
fusion  if  used  by  a  person  other  than  the  applicant,  the  tribunal 
hearing  the  application  may  require  as  a  condition  of  registra- 
tion that  those  trade  marks  shall  be  entered  on  the  Register  as 
associated  trade  marks. 

Combined  trade  marks 

90.  If  the  proprietor  of  a  trade  mark  claims  to  be  entitled 
to  the  exclusive  use  of  any  portion  of  that  trade  mark  sepa- 
rately, he  may  apply  to  register  the  same  as  separate  trade 
marks.     Each  such  separate  trade  mark  must  satisfy  all  the 
conditions  and  shall  have  all  the  incidents  of  an  independent 
trade  mark,  except  that  when  registered  it  and  the  trade  mark 
of  which  it  forms  a  part  shall  be  deemed  to  be  associated  trade 
marks,  and  shall  be  entered  on  the  Register  as  such;  but  the 
user  of  the  whole  trade  mark  shall  for  the  purposes  of  this  Act 
be  deemed  to  be  also  a  user  of  such  registered  trade  marks 
belonging  to  the  same  proprietor  as  it  contains. 

Series  of  trade  marks 

91.  When  a  person  claiming  to  be  the  proprietor  of  several 
trade  marks  for  the  same  description  of  goods,  which,  while 


NEW  ZEALAND  653 

resembling  each  other  in  the  material  particulars  thereof,  differ 
in  respect  of — 

(a)  Statements  of  the  goods  for  which  they  are  respec- 
tively used  or  proposed  to  be  used;  or 

(b)  Statements  of  number,  price,  quality,  or  names  of 
places;  or 

(c)  Other  matter  of  a  non-distinctive  character  which  does 
not  substantially  affect  the  identity  of  the  trade  mark ;  or 

(d)  Colour, — 

seeks  to  register  those  trade  marks,  they  may  be  registered  as 
a  series  in  one  registration.  All  the  trade  marks  in  a  series  of 
trade  marks  so  registered  shall  be  deemed  to  be  and  shall  be 
registered  as  associated  trade  marks. 

Assignment  and  user  of  associated  trade  marks 

92.  Associated  trade  marks  shall  be  assignable  or  trans- 
missible only  as  a  whole  and  not  separately,  but  they  shall  for 
all  other  purposes  be  deemed  to  have  been  registered  as  sepa- 
rate trade  marks : 

Provided  that  where,  under  the  provisions  of  this  Act,  user 
of  a  registered  trade  mark  is  required  to  be  proved  for  any 
purpose,  the  tribunal  may,  if  and  so  far  as  it  thinks  right,  accept 
user  of  an  associated  registered  trade  mark,  or  of  the  trade 
mark  with  additions  or  alterations  not  substantially  affecting 
its  identity,  as  an  equivalent  for  such  user. 
SPECIAL  TRADE  MARKS 

93.  Where  any  association  or  person  undertakes  to  certify 
the  origin,  material,  mode  of  manufacture,  quality,  accuracy, 
or  other  characteristic  of  any  goods  by  mark  used  upon  or  in 
connection  with  such  goods,  the  Registrar,  if  and  so  long  as  he 
is  satisfied  that  such  association  or  person  is  competent  to 
certify  as  aforesaid,  may,  if  he  shall  judge  it  to  be  to  the  public 
advantage,  permit  such  association  or  person  to  register  such 
mark  as  a  trade  mark  in  respect  of  such  goods,  whether  or  not 
such  association  or  person  be  a  trading  association  or  trader 
or  possessed  of  a  goodwill  in  connection  with  such  certifying. 
When  so  registered  such  trade  mark  shall  be  deemed  in  all 
respects  to  be  a  registered  trade  mark,  and  such  association  or 
person  to  be  the  proprietor  thereof,  save  that  such  trade  mark 
shall  be  transmissible  or  assignable  only  by  permission  of  the 
registrar. 

RENEWAL  OF  REGISTRATION 
Duration  of  registration 

94.  The  registration  of  a  trade  mark  shall  be  for  a  period 
of  fourteen  years,  but  may  be  renewed  from  time  to  time  in 


654  NEW  ZEALAND 

accordance  with  the  provisions  of  this  Act. 
Renewal  of  registration 

95.  The  Registrar  shall,  on  application  made  by  the  reg- 
istered proprietor  of  a  trade  mark  in  the  prescribed  manner 
and  within  the  prescribed  period,  renew  the  registration  of  that 
trade  mark  for  a  period  of  fourteen  years  from  the  expiration 
of  the  original  registration  or  of  the  last  renewal  of  registra- 
tion, as  the  case  may  be,  which  date  is  herein  termed  "the 
expiration  of  the  last  registration." 

Procedure  on  expiry  of  period  of  registration 

96.  At  the  prescribed  time  before  the  expiration  of  the 
last  registration  of  a  trade  mark  the  Registrar  shall  send  notice 
in  the  prescribed  manner  to  the  registered  proprietor,  at  his 
registered  address,  of  the  date  at  which  the  existing  registra- 
tion will  expire,  and  the  conditions  as  to  payment  of  fees  and 
otherwise  upon  which  a  renewal  of  registration  may  be  ob- 
tained; and  if  at  the  expiration  of  the  time  prescribed  in  that 
behalf  those  conditions  have  not  been  duly  complied  with,  the 
Registrar  may  remove  the  trade  mark  from  the  Register,  sub- 
ject to  such  conditions  (if  any)  as  to  its  restoration  to  the  Reg- 
ister as  may  be  prescribed. 

Status  of  unrenewed  trade  mark 

97.  Where  a  trade  mark  has  been  removed  from  the  Reg- 
ister for  non-payment  of  the  fee  for  renewal,  the  trade  mark 
shall  nevertheless,  for  the  purpose  of  any  application  for  reg- 
istration during  one  year  next  after  the  date  of  the  removal, 
be  deemed  to  be  a  trade  mark  which  is  already  registered, 
unless  it  is  shown  to  the  satisfaction  of  the  Registrar  that  there 
had  been  no  bona  fide  trade  user  of  that  trade  mark  during  the 
two  years  immediately  preceding  its  removal. 

CORRECTION  OF  THE  REGISTER 
Registration  of  assignments 

98.  (1)  Where  a  person  becomes  entitled  by  assignment, 
transmission,  or  other  operation  of  law  to  a  registered  trade 
mark  he  shall  make  application  to  the  Registrar  to  register  his 
title;  and  the  Registrar  shall,  on  receipt  of  such  application 
and  on  proof  of  title  to  his  satisfaction,  register  him  as  the 
proprietor  of  the  trade  mark,  and  shall  cause  an  entry  to  be 
made  in  the  prescribed  manner  on  the  Register  of  the  assign- 
ment, transmission,  or  other  instrument  affecting  the  title.    Any 
decision  of  the  Registrar  under  this  section  shall  be  subject  to 
appeal  to  the  Court. 

(2)  Except  in  cases  of  appeals  under  this  section  and  appli- 
cations made  under  section  one  hundred  and  twenty-three  of 


NEW  ZEALAND  655 

this  Act,  a  document  or  instrument  in  respect  of  which  no  entry 
has  been  made  in  the  Register  in  accordance  with  the  provisions 
of  subsection  one  hereof  shall  not  be  admitted  in  evidence  in 
any  Court  in  proof  of  the  title  to  a  trade  mark  unless  the  Court 
otherwise  directs. 

Alteration  of  registered  trade  mark 

99.  (1)  The  registered  proprietor  of  any  trade  mark  may 
apply  in  the  prescribed  manner  to  the  Registrar  for  leave  to 
add  to  or  alter  that  trade  mark  in  any  manner  not  substantially 
affecting  its  identity;  and  the  Registrar  may  refuse  such  leave, 
or  may  grant  the  same  on  such  terms,  and  subject  to  such 
limitations  as  to  mode  or  place  of  user,  as  he  may  think  fit, 
but  any  such  refusal  or  conditional  permission  shall  be  subject 
to  appeal  to  the  Court. 

(2)  If  leave  is  granted,  the  trade  mark  as  altered  shall  be 
advertised  in  the  prescribed  manner. 

Trade  marks  registered  under  previous  Acts 

100.  No  trade  mark  which  is  upon  the  Register  at  the  com- 
mencement of  this  Act,  and  which  under  this  Act  is  a  registra- 
ble  trade  mark,  shall  be  removed  from  the  Register  on  the 
ground  that  it  was  not  registrable  under  the  Acts  in  force  at 
the  date  of  its  registration.    But  nothing  in  this  section  shall 
subject  any  person  to  any  liability  in  respect  of  any  act  or  thing 
done  before  the  commencement  of  this  Act  to  which  he  would 
not  have  been  subject  under  the  Acts  then  in  force. 

Non-user  of  trade  mark 

101.  A  registered  trade  mark  may,  on  the  application  to 
the  Court  of  any  person  aggrieved,  be  taken  off  the  Register  in 
respect  of  any  of  the  goods  for  which  it  is  registered,  on  the 
ground  that  it  was  registered  by  the  proprietor  or  a  prede- 
cessor in  title  without  any  bona  fide  intention  to  use  the  same 
in  connection  with  those  goods,  and  there  has  in  fact  been  no 
bona  fide  user  of  the  same  in  connection  therewith,  or  on  the 
ground  that  there  has  been  no  bona  fide  user  of  the  trade  mark 
in  connection  with  those  goods  during  the  five  years  immedi- 
ately preceding  the  application,  unless  in  either  case  the  non- 
user  is  shown  to  be  due  to  special  circumstances  in  the  trade 
and  not  to  any  intention  not  to  use  or  to  abandon  the  trade  mark 
in  respect  of  those  goods. 

Rectification  of  Register 

102.  (1)   Notwithstanding  anything  in  section  one  hun- 
dred and  twenty-three  hereof,  any  application  for  the  rectifi- 
cation of  the  Register  of  Trade  Marks,  or  the  removal  of  any 
trade  marks  from  the  Register  in  respect  of  any  goods,  may, 


656  NEW  ZEALAND 

at  the  option  of  the  applicant,  be  made  in  the  first  instance  to 
the  Registrar  instead  of  to  the  Court: 

Provided  that  no  such  application  shall  be  made  otherwise 
than  to  the  Court  where  an  action  concerning  the  trade  mark 
in  question  is  pending. 

(2)  The  Registrar  may  at  any  stage  of  the  proceedings 
refer  any  such  application  to  the  Court,  or  he  may,  after  hear- 
ing the  parties,  determine  the  question  between  them,  subject 
to  appeal  to  the  Court. 

(3)  In  any  proceedings  for  the  rectification  of  the  Register 
of  Trade  Marks  the  Court  or  the  Registrar  shall,  in  addition 
to  any  other  powers,  have  power  to  direct  a  trade  mark  entered 
in  Part  A  of  the  Register  to  be  removed  to  Part  B  of  the 
Register. 

EFFECT  OF  REGISTRATION 
Powers  of  registered  proprietor 
„     103.    Subject  to  the  provisions  of  this  Act — 

(a)  The  person  for  the  time  being  entered  in  the  Register 
as  proprietor  of  a  trade  mark  shall,  subject  to  any  rights 
appearing  from  the  Register  to  be  vested  in  any  other  person, 
have  power  to  assign  the  same,  and  to  give  effectual  receipts 
for  any  consideration  for  the  assignment: 

(b)  Any  equities  in  respect  of  a  trade  mark  may  be  en- 
forced in  like  manner  as  in  respect  of  any  other  personal 
property. 

Rights  of  proprietor  of  trade  mark 

104.  Subject  to  the  provisions  of  section  one  hundred  and 
six  of  this  Act,  and  to  any  limitations  and  conditions  entered 
upon  the  Register,  the  registration  of  a  person  as  proprietor  of 
a  trade  mark  shall,  if  valid,  give  to  that  person  the  exclusive 
right  to  the  use  of  that  trade  mark  upon  or  in  connection  with 
the  goods  in  respect  of  which  it  is  registered: 

Provided  that  where  two  or  more  persons  are  registered 
proprietors  of  the  same,  or  substantially  the  same,  trade  mark 
in  respect  of  the  same  goods,  no  rights  of  exclusive  user  of 
that  trade  mark  shall  (except  so  far  as  their  respective  rights 
have  been  defined  by  the  Court)  be  acquired  by  any  one  of  those 
persons  as  against  any  other  by  the  registration  thereof,  but 
each  of  those  persons  shall  otherwise  have  the  same  rights  as 
if  he  were  the  sole  registered  proprietor  thereof. 

Registration  to  be  prima  facie  evidence  of  validity 

105.  In  all  legal  proceedings  relating  to  a  registered  trade 
mark  (including  applications  under  section  one  hundred  and 
twenty- three  of  this  Act)  the  fact  that  a  person  is  registered  as 


NEW  ZEALAND  657 

proprietor  of  the  trade  mark  shall  be  prima  facie  evidence  of 

the  validity  of  the  original  registration  of  the  trade  mark  and 

of  all  subsequent  assignments  and  transmissions  of  the  same. 

Registration  to  be  conclusive  after  seven  years 

106.  In  all  legal  proceedings  relating  to  a  registered  trade 
mark  (including  applications  under  section  one  hundred  and 
twenty- three  of  this  Act)  the  original  registration  of  that  trade 
mark  shall,  after  the  expiration  of  seven  years  from  the  date 
of  the  original  registration  or  seven  years  from  the  commence- 
ment of  this  Act,  whichever  last  happens,  be  taken  to  be  valid 
in  all  respects  unless  the  original  registration  was  obtained  by 
fraud,  or  unless  the  trade  mark  offends  against  the  provisions 
of  section  seventy-two  or  section  one  hundred  and  twenty-six 
of  this  Act : 

Provided  that  nothing  in  this  Part  of  this  Act  shall  entitle 
the  proprietor  of  a  registered  trade  mark  to  interfere  with  or 
restrain  the  user  by  any  person  of  a  similar  trade  mark  upon 
or  in  connection  with  goods  upon  or  in  connection  with  which 
that  person  hasr  by  himself  or  his  predecessors  in  business,  con- 
tinuously used  that  trade  mark  from  a  date  anterior  to  the 
user  or  registration,  whichever  is  the  earlier,  of  the  first  men- 
tioned trade  mark  by  the  proprietor  thereof  or  his  predecessors 
in  business,  or  to  object  (on  such  user  being  proved)  to  that 
person  being  put  upon  the  Eegister  for  such  similar  trade  mark 
in  respect  of  those  goods  under  the  provisions  of  section  eighty- 
six  of  this  Act. 

Unregistered  trade  mark 

107.  No  person  shall  be  entitled  to  institute  any  proceed- 
ing to  prevent  or  to  recover  damages  or  profits  in  respect  of 
the  infringement  of  an  unregistered  trade  mark  unless  that 
trade  mark  was  in  use  before  the  first  day  of  January,  eighteen 
hundred  and  ninety,  and  has  been  refused  registration  under 
this  Act  or  any  former  Act  relating  to  trade  marks.    The  Regis- 
trar may,  on  request,  grant  a  certificate  that  such  registration 
has  been  refused. 

Trade  usage  to  be  admitted  in  evidence 

108.  In  any  action  or  proceeding  relating  to  a  trade  mark 
or  trade  name  the  Court  or  Registrar,  as  the  case  may  be,  shall 
admit  evidence  of  the  usages  of  the  trade  concerned  and  of  any 
relevant  trade  mark  or  trade  name  or  get-up  legitimately  used 
by  other  persons. 

User  of  name,  address,  or  description  of  goods 

109.  No  registration  of  a  trade  mark  under  this  Act  shall 
interfere  with  any  bona  fide  use  by  a  person  of  his  own  name 


658  NEW  ZEALAND 

or  place  of  business,  or  that  of  any  of  his  predecessors  in  busi- 
ness, or  the  use  by  any  person  of  any  bona  fide  description  of 
the  character  or  quality  of  his  goods. 

"Passing  off"  action 

110.  Nothing  in  this  Part  of  this  Act  shall  be  deemed  to 
affect  rights  of  action  against  any  person  for  passing  off  goods 
as  those  of  another  person  or  the  remedies  in  respect  thereof. 

PROVISIONS  FOB  THE  PREVENTION  OF  ABUSES  OF  TBADE  MABKS 
Removal  from  Register  of  word  trade  marks  used  as  names 

of  articles 

111.  (1)  Where,  in  the  case  of  an  article  or  substance 
manufactured  under  any  patent  in  force  at  or  granted  after 
the  commencement  of  this  Act,  a  word  trade  mark  registered 
under  this  Act  (whether  in  Part  A  or  Part  B  of  the  Register) 
is  the  name  or  only  practicable  name  of  the  article  or  substance 
so  manufactured,  all  rights  to  the  exclusive  use  of  such  trade 
mark,  whether  under  the  common  law  or  by  registration  (and 
notwithstanding  the  provisions  of  section  one  hundred  and  six 
hereof),  shall  cease  upon  the  expiration  or  determination  of 
the  patent;  and  thereafter  such  word  shall  not  be  deemed  a 
distinctive  mark,  and  may  be  removed  by  the  Court  from  the 
Register  on  the  application  of  any  person  aggrieved. 

(2)  No  word  which  is  the  only  practicable  name  or  descrip- 
tion of  any  single  chemical  element  or  single  chemical  com- 
pound, as  distinguished  from  a  mixture,  shall  be  registered  as 
a  trade  mark ;  and  any  such  word  now  or  hereafter  on  the  Reg- 
ister may,  notwithstanding  the  provisions  of  section  one  hun- 
dred and  six  hereof,  be  removed  by  the  Court  from  the  Regis- 
ter on  the  application  of  any  person  aggrieved : 

Provided  that — 

(a)  The  provisions  of  this  subsection  shall  not  apply  where 
the  mark  is  used  to  denote  only  the  proprietor's  brand  or  make 
of  such  substance,  as  distinguished  from  the  substance  as  made 
by  others,  and  in  association  with  a  suitable  and  practicable 
name  open  to  the  public  use;  and 

(b)  In  the  case  of  marks  registered  before  the  commence- 
ment of  this  Act,  no  application  under  this  section  for  the 
removal  of  the  mark  from  the  Register  shall  be  entertained 
until  after  the  expiration  of  four  years  from  the  commencement 
of  this  Act. 

(3)  The  power  to  remove  a  trade  mark  from  the  Register 
conferred  by  this  section  shall  be  in  addition  to  and  not  in 
derogation  of  any  other  powers  of  the  Court  in  respect  of  the 
removal  of  trade  marks  from  the  Register. 


NEW  ZEALAND  659 

(4)  The  provisions  of  this  Act,  authorizing  applications 
for  the  rectification  of  the  Register  to  be  made  in  the  first 
instance  to  the  Registrar  instead  of  to  the  Court,  shall  apply 
to  applications  under  this  section. 

Certificate  of  Validity 

112.  In  any  legal  proceeding  in  which  the  validity  of  the 
registration  of  a  registered  trade  mark  comes  into  question  and 
is  decided  in  favour  of  the  proprietor  of  that  trade  mark,  the 
Court  may  certify  the  same;  and  if  it  so  certifies,  then  in  any 
subsequent  legal  proceeding  in  which  such  validity  comes  into 
question  the  proprietor  of  the  trade  mark,  on  obtaining  a  final 
order  or  judgment  in  his  favour,  shall  have  his  full  costs, 
charges,  and  expenses  as  between  solicitor  and  client,  unless 
in  that  subsequent  proceeding  the  Court  certifies  that  he  ought 
not  to  have  the  same. 

PART  IV 
GENERAL 

ADMINISTRATION  OF  THE  PATENT  OFFICE 
Patent  Office,  Registrar  of  Patents,  Etc. 

113.  (1)  There  may  from  time  to  time  be  appointed  some 
fit  person  to  be  the  Registrar  of  Patents,  Designs,  and  Trade 
Marks. 

(2)  The  person  who  at  the  commencement  of  this  Act  holds 
the  office  of  Registrar  of  Patents,  Designs,  and  Trade  Marks 
under  the  Patents,  Designs,  and  Trade  Marks  Act,  1911,  shall 
be  deemed  to  have  been  appointed  as  Registrar  of  Patents, 
Designs,  and  Trade  Marks  under  this  Act. 

(3)  The  Governor-General  may  from  time  to  time  appoint 
a  place  to  be  the  Patent  Office.    The  place  at  the  commencement 
of  this  Act  used  as  the  Patent  Office  shall  be  deemed  to  have 
been  appointed  under  this  Act. 

Deputy  Registrar  of  Patents,  Etc. 

114.  (1)  There  may  be  appointed  a  fit  and  proper  person 
to  be  Deputy  Registrar  to  act  in  the  case  of  the  illness,  inca- 
pacity, or  absence  of  the  Registrar,  or  in  the  case  of  any  vacancy 
in  the  office  of  Registrar ;  and  while  so  acting  such  Deputy  shall 
have  all  the  powers  and  privileges,  and  shall  perform  all  the 
duties,  and  be  subject  to  the  responsibilities  of  the  Registrar. 

(2)  The  fact  of  the  Deputy  Registrar  acting  as  aforesaid 
shall  be  conclusive  evidence  of  his  authority  so  to  do,  and  no 
person  shall  be  concerned  to  inquire  whether  the  occasion  has 
arisen  requiring  or  authorizing  him  so  to  act. 

(3)  The  person  who  at  the  commencement  of  this  Act  holds 


660  NEW  ZEALAND 

the  office  of  Deputy  Registrar  under  the  Patents,  Designs,  and 
Trade  Marks  Act,  1911,  shall  be  deemed  to  have  been  appointed 
the  Deputy  Registrar  under  this  Act. 

Local  Patent  Offices  and  Officers 

115.  (1)  There  may  from  time  to  time,  for  the  purposes  of 
this  Act,  be  appointed  such  Local  Patent  Offices  and  Local  Pat- 
ent Officers  as  may  be  required. 

(2)  All  appointments  of  Local  Patent  Offices  in  force  at 
the  commencement  of  this  Act  under  the  Patents,  Designs,  and 
Trade  Marks  Act,  1911,  shall  be  deemed  to  be  made  under  this 
Act;  and  all  Local  Patent  Officers  holding  office  under  that  Act 
at  the  commencement  of  this  Act  shall  be  deemed  to  be  appointed 
as  Local  Patent  Officers  under  this  Act. 

Seal  of  Patent  Office 

116.  Impressions  of  the  seal  of  the  Patent  Office  shall  be 
judicially  noticed  and  admitted  in  evidence. 

Fees 

117.  There  shall  be  paid  in  respect  of  the  grant  of  patents, 
and  the  registration  of  designs  and  trade  marks  and  applica- 
tions therefor,  and  in  respect  of  other  matters  with  relation  to 
patents,  designs,  and  trade  marks  under  this  Act,  such  fees  as 
may  from  time  to  time  be  prescribed  by  the  Governor-General 
in  Council ;  and  those  fees  shall  be  paid  into  the  Public  Account 
and  form  part  of  the  Consolidated  Fund. 

PROVISIONS  AS  TO  REGISTEBS  AND  OTHEB  DOCUMENTS  IN 

PATENT  OFFICE 
Trust  not  to  be  entered  in  Registers 

118.  There  shall  not  be  entered  in  any  Register  kept  under 
this  Act,  or  be  receivable  by  the  Registrar,  any  notice  of  any 
trust  expressed,  implied,  or  constructive. 

Inspection  of  and  extracts  from  Registers 

119.  Every  Register  kept  under  this  Act  shall  at  all  con- 
venient times  be  open  to  the  inspection  of  the  public,  subject  to 
the  provisions  of  this  Act  and  to  such  regulations  as  may  be 
prescribed;  and  certified  copies,  sealed  with  the  seal  of  the 
Patent  Office,  of  any  entry  in  any  such  Register  shall  be  given 
to  any  person  requiring  the  same  on  payment  of  the  prescribed 
fee. 


Power  of  Registrar  to  correct  clerical  errors 
121.    The  Registrar  may,  on  request  in  writing  accom- 
panied by  the  prescribed  fee, — 


NEW  ZEALAND  661 

(b)  Cancel  the  registration  of  a  .   .   .  trade  mark  either 
wholly  or  in  respect  of  any  particular  goods  or  classes  of  goods 
in  connection  with  which  the  .  .  .  trade  mark  is  registered : 

(c)  Correct  any  clerical  error  in  the  representation  of  a 
.  .  .  trade  mark,  or  any  clerical  error  or  change  in  the  name 
or  address  of  the  proprietor  of  any  .   .   .  trade  mark,  or  any 
clerical  error  in  any  other  matter  which  is  entered  upon  the 
.  .  .  Register  of  Trade  Marks: 

(d)  Enter  any  disclaimer  or  memorandum  relating  to  a 
.  .  .  trade  mark  which  does  not  in  any  way  extend  the  rights 
given  by  the  existing  registration  of  that  .  .  .  trade  mark. 

Rectification  of  Registers  by  Court 

123.  (1)  The  Court  may,  on  the  application  of  any  person 
aggrieved  by  the  non-insertion  in  or  omission  from  the  .   .   . 
Register  of  Trade  Marks  ...  of  any  entry,  or  by  any  entry 
made  in  any  such  Register  without  sufficient  cause,  or  by  any 
entry  wrongly  remaining  on  any  such  Register,  or  by  an  error 
or  defect  in  any  entry  in  any  such  Register,  make  such  order 
for  making,  expunging,  or  varying  that  entry  as  it  thinks  fit. 

(2)  The  Court  may  in  any  proceeding  under  this  section 
decide  any  question  that  it  may  be  necessary  or  expedient  to 
decide  in  connection  with  the  rectification  of  a  Register. 

(3)  Notice  of  any  application  under  this  section  shall  be 
given  to  the  Registrar. 

(4)  Any  order  of  the  Court  rectifying  a  Register  shall 
direct  that  notice  of  the  rectification  be  served  on  the  Registrar, 
who  shall  upon  the  receipt  of  the  notice  rectify  the  Register 
accordingly. 

POWERS  AND  DUTIES  OP  REGISTRAR 
Exercise  of  discretionary  power  by  Registrar 

124.  Where  any  discretionary  power  is  by  or  under  this 
Act  given  to  the  Registrar  he  shall  not  exercise  that  power 
adversely  to  the  applicant  .  .  .  for  registration  of  a  .  .  .  trade 
mark,  without  (if  so  required  within  the  prescribed  time  by  the 
applicant)  giving  the  applicant  an  opportunity  of  being  heard. 

Registrar  may  grant  extension  of  time 

125.  (1)  Where  by  this  Act  anything  is  required  to  be 
done  within  a  prescribed  time  and  by  reason  of  delay  in  the 
Patent  Office  such  thing  is  not  so  done,  the  Registrar  may  extend 
the  time  for  the  doing  of  such  thing  without  requiring  payment 
of  any  fee. 

(2)  The  power  conferred  on  the  Registrar  by  this  section 
may  be  exercised  notwithstanding  that  in  any  case  the  time 


662  NEW  ZEALAND 

limited  may  have  expired  before  the  commencement  of  this  Act. 
Refusal  to  grant  patent,  <&c.,  in  certain  cases 

126.  The  Registrar  may  refuse  to  ...  register  a  ... 
trade  mark  of  which  the  use  would,  in  his  opinion,  be  contrary 
to  law  or  morality. 

Costs 

127.  In  all  proceedings  before  the  Registrar  under  this 
Act  the  Registrar  shall  have  power  to  award  to  any  party  such 
costs  as  he  may  consider  reasonable,  and  to  direct  how  and  by 
what  parties  they  are  to  be  paid;  and  any  such  order  may  be 
made  a  rule  of  Court. 

Annual  reports  of  Registrar 

128.  The  Registrar  shall  in  every  year  cause  a  report  re- 
specting the  execution  by  or  under  him  of  this  Act  to  be  laid 
before  Parliament,  and  therein  shall  include  for  the  year  te 
which  the  report  relates  an  account  of  all  fees,  salaries  and 
allowances,  and  other  moneys  received  and  paid  under  this  Act. 

EVIDENCE,  &c. 
Evidence  before  Registrar 

129.  (1)  Subject  to  regulations  under  this  Act,  in  any 
proceeding  under  this  Act  before  the  Registrar  the  evidence 
shall  be  given  by  statutory  declaration  in  the  absence  of  direc- 
tions to  the  contrary;  but  in  any  case  in  which  the  Registrar 
thinks  it  right  so  to  do  he  may  take  evidence  viva  voce  in  lieu 
of  or  in  addition  to  evidence  by  declaration,  or  allow  any  de- 
clarant to  be  cross-examined  on  his  declaration.  Any  such  statu- 
tory declaration  may,  in  the  case  of  appeal,  be  used  before  the 
Court  in  lieu  of  evidence  by  affidavit,  and  if  so  used  shall  have 
all  the  incidents  and  consequences    of    evidence  by  affidavit. 
Every  such  statutory  declaration  shall  be  exempt  from  stamp 
duty. 

(2)  In  any  proceeding  under  this  Act  before  the  Registrar 
he  may  administer  oaths  to  any  witness,  and  may  in  the  pre- 
scribed manner  require  the  attendance  of  any  witness  and  dis- 
covery and  production  of  documents. 

(3)  The  Governor-General  may  from  time  to  time,  by  Order 
in  Council,  make  regulations — 

(a)  Prescribing  the  manner  in  which  witnesses  may  be  re- 
quired to  attend  and  to  give  evidence  in  any  proceedings  before 
the  Registrar: 

(b)  Making  provision  for  the  payment  of  the  expenses  of 
such  witnesses: 

(c)  Imposing  fines  not  exceeding  twenty  pounds  for  the 
failure  or  refusal  of  any  person  so  to  attend  and  give  evidence. 


NEW  ZEALAND  663 

Certificate  of  Registrar  to  be  evidence 

130.  A  certificate,  purporting  to  be  under  the  hand  of  the 
Registrar,  as  to  any  entry,  matter,  or  thing  which  he  is  author- 
ized by  this  Act,  or  any  regulations  made  thereunder,  to  make 
or  do,  shall  be  prima  facie  evidence  of  the  entry  having  been 
made  and  of  the  contents  thereof  and  of  the  matter  or  thing 
having  been  done  or  left  undone. 

Evidence  of  documents  in  Patent  Office 

131.  Printed  or  written  copies  or  extracts,  purporting  to 
be  certified  by  the  Registrar  and  sealed  with  the  seal  of  the 
Patent  Office,  of  or  from  patents,  specifications,  and  other  docu- 
ments in  the  Patent  Office,  and  of  or  from  Registers  and  other 
books  kept  there,  shall  be  admitted  in  evidence  in  all  Courts  of 
justice,  and  before  all  persons  acting  judicially,  and  in  all  pro- 
ceedings, without  further  proof  or  production  of  the  originals. 

Applications  and  notices  by  post 

132.  Any  application,  notice,  or  other  document  authorized 
or  required  to  be  left,  made,  or  given  at  the  Patent  Office,  or 
at  a  Local  Patent  Office,  or  to  the  Registrar,  or  to  any  other 
person  under  this  Act,  may  be  sent  by  post. 

Excluded  days 

133.  Where  the  last  day  fixed  by  this  Act  for  doing  any- 
thing under  this  Act  falls  on  any  day  specified  in  regulations 
under  this  Act  as  an  excluded  day,  the  rules  may  provide  for 
the  thing  being  done  on  the  next  following  day  not  being  an 
excluded  day. 

Declaration  by  infant,  lunatic,  &c. 

134.  (1)  If  any  person  is,  by  reason  of  infancy,  lunacy, 
or  other  disability,  incapable  of  making  any  declaration,  or 
doing  anything  required  or  permitted  by  or  under  this  Act,  the 
guardian  or  committee  (if  any)  of  the  person  subject  to  the 
disability,  or,  if  there  is  none,  any  person  appointed  by  any 
Court  possessing  jurisdiction  in  respect  of  his  property,  may 
make  that  declaration,  or  a  declaration  as  nearly  corresponding 
thereto  as  circumstances  permit,  and  do  that  thing  in  the  name 
and  on  behalf  of  the  person  subject  to  the  disability. 

(2)  An  appointment  may  be  made  by  the  Court  for  the 
purposes  of  this  section  upon  the  petition  of  any  person  acting 
on  behalf  of  the  person  subject  to  the  disability,  or  of  any  other 
person  interested  in  the  making  of  the  declaration  or  the  doing 
of  the  thing. 

PATENT  AGENTS 
Registration  of  Patent  Agents 

135.  (1)  No  person  shall  practice,  describe  himself,  or 


664  NEW  ZEALAND 

hold  himself  out,  or  permit  himself  to  be  described  or  held  out, 
as  a  Patent  Agent  unless, — 

(a)  In  the  case  of  an  individual,  he  is  registered  as  a 
Patent  Agent  in  the  Register  of  Patent  Agents: 

(b)  In  the  case  of  a  firm,  every  partner  of  the  firm  is  so 
registered : 

(c)  In  the  case  of  a  company  which  commences  to  carry 
on  business  as  a  Patent  Agent  after  the  commencement  of  this 
Act,  every  director  and  the  manager  (if  any)  of  the  company 
is  so  registered: 

(d)  In  the  case  of  a  company  which  is  carrying  on  business 
as  a  Patent  Agent  on  the  date  of  the  commencement  of  this 
Act,  a  manager  or  a  director  of  the  company  is  so  registered : 

Provided  that  in  the  last-mentioned  case  the  name  of  such 
manager  or  director  shall  be  mentioned  as  being  a  registered 
Patent  Agent  in  all  professional  advertisements,  circulars,  or 
letters  in  which  the  name  of  the  company  appears. 

(2)  Every  person  not  registered  as  a  Patent  Agent  before 
the  first  day  of  October,  nineteen  hundred  and  twenty-one,  who 
proves  to  the  satisfaction  of  the  Registrar  that  he  was  on  that 
date  bona  fide  practising  as  a  Patent  Agent,  whether  individu- 
ally or  as  a  member  of  a  firm  or  as  a  manager  or  director  of 
a  company,  shall  be  entitled  to  be  registered  as  a  Patent  Agent 
if  he  makes  application  for  the  purpose  within  six  months  from 
the  date  of  the  commencement  of  this  Act  unless,  after  giving 
an  applicant  an  opportunity  of  being  heard,  the  Registrar  is 
satisfied  that  he  has,  while  so  practising,  been  guilty  of  such 
misconduct  as  would  have  rendered  him  liable,  if  his  name  had 
been  on  the  Register  of  Patent  Agents,  to  have  his  name  erased 
therefrom. 

(3)  If  any  person  contravenes  the  provisions  of  this  section 
he  shall  be  liable  on  summary  conviction  to  a  fine  not  exceeding 
twenty  pounds;  and  in  the  case  of  a  company  every  director, 
manager,  secretary,  or  other  officer  of  the  company  who  is 
knowingly  a  party  to  the  contravention  shall  be  guilty  of  a  like 
offence  and  liable  to  a  like  fine. 

(4)  For  the  purposes  of  this  section  the  expression  "  Patent 
Agent"  means  a  person,  firm,  or  company  carrying  on  for  gain 
in  New  Zealand  the  business  of  applying  for  or  obtaining  patents 
in  New  Zealand  or  elsewhere. 

(5)  No  person  shall,  after  the  commencement  of  this  Act, 
be  registered  as  a  Patent  Agent  unless  he  is  a  British  subject. 

(6)  Nothing  in  this  section  shall  be  taken  to  prohibit  solici- 
tors of  the  Supreme  Court  of  New  Zealand  from  taking  such 
part  as  they  have  heretofore  taken  in  any  proceedings  under 


NEW  ZEALAND  665 

any  Act  relating  to  Patents,  Designs,  or  Trade  Marks. 

(7)  The  Register  of  Patent  Agents  existing  at  the  com- 
mencement of  this  Act  shall  be  incorporated  with  and  form 
part  of  the  Register  of  Patent  Agents  under  this  Act. 

Agents  for  patents 

136.  (1)  Regulations  under  this  Act  may  authorize  the 
Registrar  to  refuse  to  recognize  as  agent  in  respect  of  any 
business  under  this  Act  any  person  whose  name  has  been  erased 
from  the  Register  of  Patent  Agents,  or  who  is  proved  to  the 
satisfaction  of  the  Registrar,  after  being  given  an  opportunity 
of  being  heard,  to  have  been  convicted  of  such  an  offence  or  to 
have  been  guilty  of  such  misconduct  as  would  have  rendered 
him  liable,  if  his  name  had  been  on  the  Register  of  Patent 
Agents,  to  have  his  name  erased  therefrom;  and  may  authorize 
the  Registrar  to  refuse  to  recognize  as  agent  in  respect  of  any 
business  under  this  Act  any  company  which,  if  it  had  been  an 
individual,  the  Registrar  could  refuse  to  recognize  as  such  agent. 

(2)  Where  a  company  or  firm  acts  as  agents,  such  regula- 
tions as  aforesaid  may  authorize  the  Registrar  to  refuse  to 
recognize  the  company  or  firm  as  agent  if  any  person  whom 
the  Registrar  could  refuse  to  recognize  as  an  agent  acts  as 
director  or  manager  of  the  company  or  is  a  partner  in  the  firm. 

(3)  Except  as  otherwise  provided  in  this  subsection,  the 
Registrar  shall  refuse  to  recognize  as  agent  in  respect  of  any 
business  under  this  Act  any  person  who  neither  resides  nor  has 
a  place  of  business  in  New  Zealand : 

Provided  that  the  Registrar  may,  in  his  discretion,  recog- 
nize as  such  agent  any  person  not  having  a  place  of  business 
in  New  Zealand,  but  resident  in  a  country  in  which  persons 
resident  in  New  Zealand  are  recognized  as  Patent  Agents  al- 
though having  no  place  of  business  in  that  country. 

Recovery  of  agents'  charges 

137.  No  Patent  Agent,  or  person  acting  in  that  capacity, 
shall  commence  or  maintain  any  action  for  the  recovery  of  any 
fees,  charges,  or  disbursements  paid  or  incurred  or  made  by 
him  for  any  business  done  by  him  on  behalf  of  any  person  who 
claims  to  be  the  true  and  first  inventor  of  an  invention  in  the 
matter  of  any  application  for  a  patent  until  the  expiration  of 
seven  days  after  a  bill  of  such  fees,  charges,  and  disbursements, 
signed  by  him  (or,  in  the  case  of  a  partnership,  by  any  of  the 
partners  with  the  name  of  such  partnership),  or  enclosed  in  or 
accompanied  by  a  letter  signed  in  like  manner  referring  to 
such  bill,  has  been  delivered  to  the  party  chargeable.     Such 
delivery  may  be  effected  either  by  personal  delivery  to  the 


666  NEW  ZEALAND 

party  chargeable  or  by  leaving  the  bill  or  letter  for  him  at  his 
place  of  business,  or  dwellinghouse,  or  last  known  place  of  abode, 
or  by  forwarding  the  same  to  him  by  post  in  a  registered  letter 
addressed  to  him  as  aforesaid. 

Regulations 

138.  (1)  The  Governor-General  in  Council  may  from  time 
to  time  make  such  regulations  as  he  thinks  expedient,  subject 
to  the  provisions  of  this  Act, — 

(a)  For  regulating  the  practice  of  registration  under  this 
Act: 

(b)  For  classifying  goods  for  the  purposes  of  designs  and 
trade  marks: 

(c)  For  making  or  requiring  duplicates  of  specifications, 
drawings,  and  other  documents : 

(d)  For  prescribing  the  mode  of  advertising  any  matter 
which  by  this  Act  is  required  to  be  advertised: 

(e)  For  securing  and  regulating  the  publishing  and  selling 
or  distributing  of  copies  of  specifications,  drawings,  and  other 
documents : 

(f )  For  securing  and  regulating  the  making,  printing,  pub- 
lishing, and  selling  of  indexes  to  and  abridgments  of  specifica- 
tions and  other  documents  in  the  Patent  Office;  and  providing 
for  the  inspection  of  indexes  and  abridgments  and  other  docu- 
ments : 

(g)  For  regulating  the  presentation  of  copies  of  Patent 
Office  publications  to  patentees  and  to  public  authorities,  bodies, 
and  institutions  in  New  Zealand  or  elsewhere : 

(h)  For  regulating  the  keeping  of  the  Register  of  Patent 
Agents  under  this  Act,  the  registration  of  Patent  Agents,  the 
terms  and  conditions  of  such  registration,  and  the  cases  and 
manner  in  which  such  registration  may  be  cancelled : 

(1)  Generally  for  regulating  the  business  of  the  Patent 
Office  and  all  things  by  this  Act  placed  under  the  direction  or 
control  of  the  Registrar. 

(2)  All  regulations  made  in  pursuance  of  this  Act  shall  be 
published  in  the  Gazette,  and  shall  be  laid  before  Parliament  as 
soon  as  practicable  after  they  are  made;  and  if  either  House 
of  Parliament,  within  the  next  forty  days  after  any  regulations 
have  been  so  laid  before  that  House,  resolves  that  the  regula- 
tions or  any  of  them  ought  to  be  annulled,  the  regulations,  or 
those  to  which  the  resolution  applies,  shall  after  the  date  of 
that  resolution  be  of  no  effect,  without  prejudice  to  the  validity 
of  anything  done  in  the  meantime  under  the  regulations  or  to 
the  making  of  any  new  regulations. 


NEW  ZEALAND  667 

LEGAL  PROCEEDINGS 
Rules  of  Court 

139.  The  Governor-General  in  Council,  with  the  concur- 
rence of  any  two  or  more  of  the  Judges  of  the  Court,  may  from 
time  to  time  make  rules  of  practice  and  procedure,  consistent 
with  this  Act,  for  regulating  proceedings  in  the  Court  under 
this  Act;  and  subject  thereto  such  proceedings  shall  be  taken 
in  accordance  with  the  practice  and  procedure  of  the  Court  in 
like  cases. 

Appeals 

140.  (1)  Every  appeal  given  by  this  Act  against  a  de- 
cision of  the  Registrar  shall  be  by  way  of  motion,  of  which 
notice  shall  be  filed  in  the  Court  and  served  upon  the  Registrar 
within  twenty-eight  days  after  the  day  on  which  the  decision 
appealed  against  was  given. 

(2)  In  any  such  appeal  the  Court  shall  have  and  may  exer- 
cise the  same  discretionary  powers  as  are  conferred  upon  the 
Registrar. 

Registrar  to  have  notice  of  proceeding  for  rectification 

141.  (1)  In  any  legal  proceeding  in  which  tho  relief  sought 
includes  alteration  or  rectification  of  a  Register,  the  Registrar 
shall  have  the  right  to  appear  and  be  heard,  and  shall  appear  if 
so  directed  by  the  Court. 

(2)  Unless  otherwise  directed  by  the  Court,  the  Registrar, 
in  lieu  of  appearing  and  being  heard,  may  submit  to  the  Court 
a  statement  in  writing  signed  by  him,  giving  particulars  of  the 
proceedings  before  him  in  relation  to  the  matter  in  issue,  or  of 
the  grounds  of  any  decision  given  by  him  affecting  the  same, 
or  of  the  practice  of  the  Patent  Office  in  like  cases,  or  of  such 
other  matters  relevant  to  the  issues  and  within  his  knowledge 
as  such  Registrar,  as  he  thinks  fit;  and  that  statement  shall  be 
deemed  to  form  part  of  the  evidence  in  the  proceeding. 
Costs  of  proceedings  before  the  court 

142.  In  all  proceedings  before  the  Court  under  this  Act 
the  costs  of  the  Registrar  shall  be  in  the  discretion  of  the 
Court,  but  the  Registrar  shall  not  be  ordered  to  pay  the  costs 
of  any  other  of  the  parties. 

OFFENCES 

143.  (1)  Every  person  who  makes  or  causes  to  be  made 
a  false  entry  in  any  Register  kept  under  this  Act,  or  a  writing 
falsely  purporting  to  be  a  copy  of  an  entry  in  any  such  Register, 
or  produces  or  tenders,  or  causes  to  be  produced  or  tendered, 
in  evidence  any  such  writing,  knowing  the  entry  or  writing  to 
be  false,  is  liable  on  indictment  to  imprisonment  with  or  without 


668  '  NEW  ZEALAND 

hard  labour  for  any  term  not  exceeding  two  years. 

(2)  Every  person  who  falsely  .  .  .  describes  any  .  .  .  trade 
mark  applied  to  any  article  sold  by  him  as  registered  in  New 
Zealand  is  liable  on  summary  conviction  to  a  fine  of  twenty 
pounds. 

(3)  Every  person  who  sells  an  article  having  stamped,  en- 
graved, or  impressed  thereon,  or  otherwise  applied  thereto,  the 
words  .   .  .  " registered  in  New  Zealand,"  or  any  other  words 
or  letters  implying  that  the  .  .  .  trade  mark  applied  thereto  is 
registered  in  New  Zealand,  shall  be  deemed  for  the  purposes  of 
this  section  to  represent  that  the    .     .     .    trade  mark  is  so 
registered. 

(4)  Every  person  who,  after  the  expiry  of  ...  the  regis- 
tration of  a  .   .   .  trade  mark  registered  in  New  Zealand,  puts 
or  causes  to  be  put  on  any  article  to  which  the  .  .  .  trade  mark 
had  been  applied,  the  words  ..."  registered  in  New  Zealand, ' ' 
or  other  words  or  letters  implying  that  there  is  a  .   .   .  regis- 
tration of  a  trade  mark  subsisting  in  New  Zealand,  is  liable  on 
summary  conviction  to  a  fine  of  twenty  pounds. 

(5)  If  any  person  uses  on  his  place  of  business,  or  on  any 
document  issued  by  him  or  otherwise,  the  words  " Patent  Office," 
or  any  other  words  suggesting  that  his  place  of  business  is 
officially  connected  with,  or  is,  the  Patent  Office,  he  shall  be 
liable  on  summary  conviction  to  a  fine  of  twenty  pounds. 

INTERNATIONAL  AND  COLONIAL  ARRANGEMENTS 
144.  (1)  Subject  to  the  provisions  of  this  section,  any 
person  who  has  applied  for  protection  for  any  ...  trade  mark 
in  any  country  to  which  this  section  applies,  or  his  legal  repre- 
sentative or  assignee,  shall  be  entitled  ...  to  registration  of 
his  .  .  .  trade  mark,  under  this  Act  in  priority  to  other  appli- 
cants; and  the  .  .  .  registration  shall  have  the  same  date  as 
the  date  of  the  application  in  that  country :  Provided  that — 

(a)  The  application  is  made  ...   (in  the  case  of  a  .  .   . 
trade  mark)  within  six  months  from  the  application  for  protec- 
tion in  that  country;  and 

(b)  Nothing  in  this  section  shall  entitle  the  .  .  .  proprietor 
of  the  .   .   .  trade  mark  to  recover  damages  or  an  account  of 
profits  in  respect  of  infringements  happening  prior  to  the  actual 
date  on  which  his  .  .  .  trade  mark  is  registered  in  New  Zealand. 

(2)  The  .   .   .  registration  of  the  .   .   .  trade  mark  shall 
not  be  invalidated, — 

(c)  In  the  case  of  a  trade  mark,  by  reason  only  of  the  use 
of  the  trade  mark — 


NEW  ZEALAND  669 

in  New  Zealand  during  the  period  specified  in  this  section  as 
that  within  which  the  application  may  be  made. 

(3)  The  application  for  the  .   .   .  registration  of  a  trade 
mark  under  this  section  must  be  made  in  the  same  manner  as 
an  ordinary  application  under  this  Act :  Provided  that, — 

(b)  In  the  case  of  trade  marks,  any  trade  mark  the  regis- 
tration of  which  has  been  duly  applied  for  in  the  country  of 
origin  may  be  registered  under  this  Act. 

(4)  This  section  applies  to  the  following  countries  only:— 

(a)  The  United  Kingdom: 

(b)  Any  country  (whether  a  foreign  State  or  a  British  pos- 
session) to  which  this  section  is  declared  to  be  applicable  by  an 
Order  in  Council  made    by    the  Governor-General  under  the 
authority  hereinafter  expressed,  subject,  however,  to  any  re- 
strictions or  limitations  imposed  by  that  Order  in  Council: 

(c)  Any  foreign  State  to  which  section  ninety-one  of  the 
Imperial  Patents  and  Designs  Act,  1907,*  is  applicable  for  the 
time  being  by  virtue  of  any  Order  in  Council  made  by  His 
Majesty,  whether  before  or  after  the  commencement  of  this  Act, 
subject,  however,  to  any  restrictions  or  limitations  imposed  by 
that  Order  in  Council  in  respect  of  the  application  of  the  said 
section. 

(5)  Where  it  is  made  to  appear  to  the  Governor- General 
that  satisfactory  provision  has  been  made    as    between  New 
Zealand  and  any  foreign  State  or  British  possession  for  the 
mutual  protection  of  inventions,  designs,  or  trade  marks,  the 
Governor-General  may,  by  Order  in  Council,  declare  that  this 
section  shall  apply  to  that  foreign  State  or  British  possession 
as  from  a  date  to  be  specified  in  the  Order  in  Council,  subject, 
however,  to  such  restrictions  or  limitations   (if  any)   as  the 
Governor-General  thinks  fit. 

(6)  The  Governor-General  may  at  any  time,  by  Order  in 
Council,  declare  that,  as  from  a  date  to  be  specified  in  the  Order, 
this  section — 

(a)  Shall  no  longer  apply  to  any  country  named  in  the 
Order : 

(b)  Shall  in  its  application  to  that  country  be  subject  to 
the  restrictions  or  limitations  specified  in  the  Order. 

(7)  Every  Order  in  Council  made  by  the  Governor-General 
under  section  one  hundred  and  twenty-nine  of  the  Patents,  De- 
signs, and  Trade  Marks  Act,  1911,  or  the  corresponding  pro- 
visions of  any  former  Act,  and  in  force  at  the  commencement 

*For  the  provisions  in  question,  see  Great  Britain. 


670  NEW  ZEALAND 

of  this  Act,  shall  continue  in  force  and  shall  operate  as  if  made 
under  this  section,  and  this  section  shall  apply  accordingly  to 
every  country  to  which  any  such  Order  in  Council  relates,  sub- 
ject, however,  to  any  restrictions  or  limitations  imposed  by  the 
Order. 

REPEALS  AND  SAVINGS 
Saving  of  prerogative  of  Crown 

145.  Nothing  in  this  Act  shall  take  away,  abridge,  or  preju- 
dicially affect  the  prerogative  of  the  Crown  in  relation  to  the 
granting  of  any  letters  patent  or  to  the  withholding  of  a  grant 
thereof. 

Repeals  and  Savings 

146.  (1)  The  enactments  mentioned  in  the  Second  Schedule 
hereto  are  hereby  repealed. 

(2)  Except  where  otherwise  expressly  provided,  this  Act 
shall  apply  to  trade  marks  registered  before  as  well  as  after 
the  commencement  of  this  Act. 


NICARAGUA 

DECREE  OF  NOVEMBER  21,  1907 

ARTICLE  1.  The  State  shall  protect  within  its  territory  the 
exclusive  ownership  of  marks  of  manufacture  and  of  commerce 
authorized  in  conformity  with  this  law. 

ART.  2.  A  mark  of  manufacture  or  of  commerce  is  the 
special  sign  applied  to  an  agricultural  or  industrial  product, 
or  to  a  commercial  article,  to  advise  the  public  of  its  origin  and 
to  distinguish  it  from  other  products  of  the  same  kind. 

ART.  3.  The  choice  of  the  sign  which  is  to  constitute  a 
mark  shall  pertain  to  the  producer  of  the  article  for  which 
it  is  destined ;  but  the  following  may  not  be  used  in  the  Republic 
as  marks : 

I.  Generic  terms,  names  merely  geographical  and  those  of 
individuals  or  associations,  unless  the  mark  contains  in  addition 
distinctive  features  which  serve  to  distinguish  the  object  for 
which  it  is  destined; 

II.  Any  sign  that  is  contrary  to  morals,  or  that  tends  to 
ridicule  ideas,  persons,  objects  or  institutions  which,  in  the  judg- 
ment of  the  Ministry  of  Fomento  are  worthy  of  general  con- 
sideration ; 

III.  The  National  arms,  escutcheons  and  emblems; 

IV.  The  arms,  escutcheons  or  emblems  of  foreign  nations, 
states  or  political  corporations,  without  their  respective  consent ; 

V.  The  names,  firms  and  portraits  of  living  persons,  with- 
out their  consent; 

VI.  Marks  identical  with  or  substantially  similar  to  those 
that  have  been  already  registered  when  it  is  sought  to  protect 
with  the  former  products  of  the  same  class  as  those  protected 
by  the  latter. 

ART.  4.  The  Government  shall  establish  a  special  Office 
for  the  registration  of  marks.  Until  such  time,  the  Direction 
General  of  Public  Works  shall  discharge  these  duties,  and  the 
chief  thereof  shall  have  charge  of  the  said  registration. 

ART.  5.  Applications  for  registration  shall  be  presented 
to  the  Ministry  of  Fomento  on  stamped  paper  of  the  sixth  class, 
signed  by  the  interested  party  or  by  his  representative,  the 
latter  to  be  provided  at  least  with  an  authentic  letter-power  of 
attorney,  and  shall  contain  the  following: 

a)  The  name  of  the  owner  of  the  mark,  his  domicile  and 
nationality ; 


672  NICARAGUA 

b)  The  name  and  location  of  the  factory  or  establishment 
where  the  article  is  produced  for  which  the  mark  is  destined; 

c)  The   enumeration   and   description   of   the   objects   or 
products  that  it  is  intended  to  distinguish  by  means  of  the  mark ; 

d)  A  description  of  the  mark,  illustrated  by  a  facsimile  of 
the  same,  reproduced  in  triplicate; 

e)  In  case  the  mark  is  arranged  in  intaglio  or  in  relief  or 
presents  any  other  peculiarity  that  cannot  be  shown  graphic- 
ally, there  shall  be  presented  two  like  copies  with  an  indication 
of  the  particulars  and  details. 

ART.  6.  The  registration  of  each  mark  shall  entail  a  charge 
of  twenty-five  pesos  and  it  should  be  renewed  every  ten  years. 
Delay  in  the  renewal  does  not  occasion  the  loss  of  the  right  to 
the  exclusive  use  of  the  mark,  but,  until  it  has  been  accom- 
plished, the  interested  party  shall  not  bring  action  to  prosecute 
infringers  of  the  mark  and  of  the  article  which  it  protects. 

ART.  7.  An  application  in  regard  to  the  registration  of  a 
mark  having  been  presented,  the  Minister  of  Fomento  shall 
request  a  report  from  the  Chief  of  the  Eegistration  Office.  This 
official  shall  make  an  examination  of  the  documents  presented 
in  order  to  ascertain  if  they  satisfy  the  requirements  of  the  law, 
and  shall  complete  the  resulting  report  within  the  third  day. 
If  it  is  favorable,  the  Minister  of  Fomento  shall  give  an  order 
to  register  it,  on  payment  of  the  respective  fees. 

ART.  8.  The  registration  of  a  mark  shall  always  be  made 
without  prejudice  to  third  parties,  and  upon  the  exclusive 
responsibility  of  the  applicant. 

ART.  9.  The  registration  having  been  effected,  the  Chief 
of  the  Office  shall  send  to  the  party  interested  the  certification 
of  the  matter,  on  stamped  paper  of  the  first  class,  the  document 
that  constitutes  the  title  to  the  exclusive  use  of  the  mark. 

ART.  10.  Questions  that  may  arise  in  regard  to  the  right 
to  the  exclusive  use  of  a  mark,  in  regard  to  the  priority  of  its 
registration  and  in  regard  to  its  identity  with  others  already 
registered,  shall  be  decided  by  the  ordinary  Tribunals. 

ART.  11.  When  there  has  been  litigation  the  sentence  of 
execution  shall  be  registered  and  noted  on  the  certificate  of 
registration. 

ART.  12.  Whenever  there  is  presented  an  application  for 
registration  of  a  mark  of  which  Art.  5  treats,  the  Ministry 
shall  cause  it  to  be  published  in  the  official  journal  for  three 
consecutive  months. 

The  ninety  days  having  elapsed,  if  no  opposition  has  been 
presented,  the  Ministry  shall  resolve  to  grant  to  the  applicant 
the  title  of  ownership  of  the  mark,  which  shall  be  issued  on  a 


NICARAGUA  673 

sheet  of  stamped  paper  of  the  first  class. 

ART.  13.  If  there  has  been  opposition,  the  Ministry  shall 
order  the  parties  to  argue  their  rights  before  the  competent 
lower  judge,  and  in  such  case  shall  only  issue  the  title  to  him  to 
whom  the  greater  right  has  been  declared  by  sentence  of 
execution. 

ART.  14.  Trade  marks  may  only  be  transferred  along  with 
the  establishment  producing  the  objects  that  they  served  to  dis- 
tinguish. Consequently,  the  transfer  of  a  mark  carries  with  it  the 
right  of  industrial  or  commercial  exploitation  of  the  products 
protected  by  it.  The  transfer  is  not  subject  to  any  special  for- 
mality and  shall  be  proved  according  to  common  law,  but  it 
should  be  registered  in  the  Trade  Mark  Office,  without  which 
requisite  it  shall  be  without  effect  against  third  parties. 

ART.  15.  The  registration  of  a  mark  shall  be  null  when  it 
has  been  effected  in  contravention  of  the  provisions  of  this  law, 
as  also  when  the  mark  has  been  previously  registered  by  an- 
other, in  which  case  the  nullity  shall  be  judicially  declared  upon 
petition  of  the  interested  party. 

Advice  of  the  sentence  of  nullity  shall  be  given  to  the  Min- 
istry of  Fomento  by  the  judge  or  Tribunal  that  has  taken  cog- 
nizance of  it  in  the  last  instance. 

ART.  16.  Action  demanding  nullity  of  the  registration  of 
a  mark  shall  be  open  to  anyone  that  believes  himself  to  be 
prejudiced  thereby;  the  Public  Ministry  may  also  bring  it  in 
those  cases  in  which  there  is  any  general  interest. 

ART.  17.  Questions  regarding  nullity  of  which  the  last 
article  treats  shall  be  decided  by  the  ordinary  Tribunals  and 
the  sentences  of  execution  that  contain  such  decisions  shall  be 
registered  in  the  respective  Office. 

ART.  18.  The  following  shall  be  considered  guilty  of  the 
offense  included  in  Art.  319  of  the  Penal  Code  and  shall  be 
punished  by  the  penalties  therein  established: 

a)  Those  that  place  on  articles  or  products  that  they  sell 
or  manufacture  a  mark  at  that  time  legally  registered  in  favor 
of  another  person; 

b)  Those  that  place  on  articles  or  products  that  they  sell 
or  produce,  a  mark  that  is  so  close  an  imitation  of  one  legally 
registered,  as  to  be  confounded  with  the  lawful  mark  at  first 
sight ; 

c)  Those  that  place  on  the  articles  mentioned  a  mark  that, 
although  legally  registered,  is  made  to  appear  by  any  addition, 
deletion  or  alteration,  as  if  it  were  another  mark. 

d)  Those  that  place  on  sale  or  put  into  circulation  goods 


674  NICARAGUA 

marked  in  accordance  with  the  conditions  that  the  preceding 
sections  enumerate. 

ART.  19.  Articles  or  products — objects  of  the  offenses 
named  in  the  preceding  article — shall  be  confiscated;  but  when 
the  owner  of  a  mark,  legally  registered,  shall  have  been  made 
plaintiff,  he  shall  be  entitled  to  have  adjudged  to  him  all  the 
products  that  are  found  bearing  the  illegal  mark,  whether  then 
in  the  possession  of  the  guilty  party  or  in  the  possession  of  an 
agent  or  consignee. 

ART.  20.  Trade  marks  shall  be  preserved  in  the  Registra- 
tion Office  in  perpetuity,  as  also  the  books  in  which  are  entered 
the  details  belonging  to  them;  both  may  be  examined  by  who- 
ever makes  the  request  during  the  hours  which  are  designated 
for  that  object,  and  the  applicant  may  obtain  at  his  own  expense, 
a  certified  copy  of  the  registration  on  payment  of  the  fee  of 
one  peso  for  each  certification  issued,  in  addition  to  that  of 
making  the  copy. 

ART.  21.  There  shall  not  be  considered  as  marks,  the  form, 
color,  locutions,  or  designations  that  do  not  constitute  by  them- 
selves alone  the  distinctive  sign  of  the  specialty,  in  a  commer- 
cial sense,  of  an  industrial  product. 

ART.  22.  The  duration  of  the  ownership  of  a  trade  mark 
is  indefinite ;  but  it  shall  be  considered  abandoned  by  reason  of 
the  closing,  or  lack  of  production  for  more  than  one  year,  of  the 
establishment,  factory,  or  business  in  which  it  was  used. 

ART.  23.  Designs  and  industrial  models  are  comprised  in 
the  provisions  of  this  law. 

ART.  24.  The  provisions  of  the  present  law  shall  be  ap- 
plicable to  all  that  which  is  not  contrary  to  international  treaties 
in  regard  to  the  matter,  especially  in  regard  to  marks  of  com- 
merce and  of  manufacture  celebrated  during  the  Second  Inter- 
national American  Conference,  January  27,  1902. 

ART.  25.  This  law  shall  become  of  effect  from  the  date  of 
its  publication  in  the  Gaceta  Oficial. 


NIGERIA 

ORDINANCE  NO.  20  OF  DECEMBER  31,  1914 

Short  Title  and  Application 

1.  This  Ordinance  may  be  cited  as  the  Trade  Marks  Ordi- 
nance, 1914,  and  shall  apply  to  the  Colony  and  Protectorate. 

DEFINITIONS 
Interpretation 

2.  Definitions : — 

"Mark"  includes  a  device,  brand,  heading,  label,  ticket, 
name,  signature,  word,  letter,  numeral,  or  any  combination 
thereof. 

"Trade  Mark"  means  a  mark  used  or  proposed  to  be  used 
upon  or  in  connexion  with  goods  for  the  purposes  of  indicating 
that  they  are  the  goods  of  the  proprietor  of  such  trade  mark  by 
virtue  of  manufacture,  selection,  certification,  dealing  with,  or 
offering  for  sale. 

"Registrable  Trade  Mark"  means  a  trade  mark  which  is 
capable  of  registration  under  the  provisions  of  this  Ordinance. 

"Registered  Trade  Mark"  means  a  trade  mark  which  is 
actually  on  the  register. 

"Prescribed"  means,  in  relation  to  proceedings  before  the 
Court,  prescribed  by  Rules  of  Court;  and,  in  other  cases,  pre- 
scribed by  this  Ordinance  or  any  Regulations  made  thereunder. 

"Registrar"  means  such  officer  as  the  Governor  shall  ap- 
point to  be  the  Registrar  of  Trade  Marks  and  until  such  ap- 
pointment is  made  means  the  Comptroller  of  Customs. 

"Court"  means  the  Supreme  Court  of  Nigeria. 

"Goods"  means  anything  which  is  the  subject  of  trade, 
manufacture,  or  merchandise. 

"Northern  Provinces"  means  that  portion  of  the  Protec- 
torate which,  on  the  31st  day  of  December,  1913,  was  included 
in  the  Protectorate  of  Northern  Nigeria. 

REGISTER  OF  TRADE  MARKS 

3.  There  shall  be  kept  at  the  Registrar's  Office  a  book 
called  the  register  of  trade  marks,  wherein  shall  be  entered  all 
registered  trade  marks  with  the  names  and  addresses  of  their 
proprietors,  the  dates  on  which  applications  were  made  for  their 
registration,  as  hereinafter  provided,  notifications  of  assign- 
ments, and  of  transmissions  of  trade  marks,  and  such  other 
matter  as  may  be  from  time  to  time  prescribed. 


676  NIGERIA 

No  Trust  to  be  Entered  on  Register 

4.  There  shall  not  be  entered  in  the  register  kept  under 
this  Ordinance  any  notice  of  any  trust  expressed,  implied  or 
constructive,  nor  shall  any  such  notice  be  receivable  by  the 
Registrar. 

Incorporation  of  Existing  Register  and  Classification 

5.  The  register  of  trade  marks  existing  at  the  date  of  the 
commencement  of  this  Ordinance  shall  be  incorporated  with  and 
form  part  of  the  register.    Subject  to  the  provisions  of  sections 
43  and  48,  the  validity  of  the  original  entry  of  any  trade  mark 
upon  the  registers  so  incorporated  shall  be  determined  in  ac- 
cordance with  the  Ordinances  in  force  at  the  date  of  such  entry, 
and  such  trade  mark  shall  retain  its  original  date,  but  subject 
to  the  provisions  of  section  7,  for  all  other  purposes  it  shall  be 
deemed  to  be  a  trade  mark  registered  under  this  Ordinance. 

All  trade  marks  registered  under  the  classification  of  goods 
as  provided  in  the  Schedule  to  the  Trade  Marks  Ordinance,  1910, 
shall  be  deemed  to  be  registered  under  the  corresponding  classi- 
fication of  goods  as  provided  in  the  regulations  under  this 
Ordinance. 

Saving  for  Marks  Already  Registered  Under  Trade  Marks 
Proclamation,  1900 

6.  (1)  Nothing  herein  contained  shall  affect  the  validity 
of  any  act  done  or  any  right  or  obligation  acquired  or  incurred 
under  or  by  virtue  of  the  provisions  of  the  Trade  Marks  Proc- 
lamation, 1900,  enacted  by  the  High  Commissioner  of  the  Pro- 
tectorate of  Southern  Nigeria,  or  of  any  Proclamation  enacted 
amending  the  same,  or  of  any  rules  made  thereunder. 

Transfer  to  Register  Created  Under  This  Ordinance 
(2)  All  trade  marks  duly  registered  under  the  said  Trade 
Marks  Proclamation,  1900,  shall,  three  months  before  the  ex- 
piration of  the  first  period  of  registration,  be  transferred  to 
the  register  kept  under  the  provisions  of  this  Ordinance,  and 
shall  thereupon,  subject  to  the  provisions  of  section  7,  be  sub- 
ject to  the  provisions  of  this  Ordinance  in  all  respects  as  though 
they  had  been  originally  registered  thereunder. 

Rights  in  Respect  of  a  Trade  Mark  Registered  Before  the  Com- 
mencement of  the  Ordinance  Not  to  Extend  to  Northern 
Provinces  Unless  Extended  in  Accordance  with  the 
Provisions  of  Next  Section 

7.  The  rights  and  privileges  by  this  Ordinance  conferred 
upon  the  proprietor  of  a  registered  trade  mark  shall  not,  in  the 
case  of  a  trade  mark  registered  before  the  commencement  of 
this  Ordinance,  extend  to  the  Northern  Provinces  of  the  Protec- 


NIGERIA  677 

torate  unless  the  same  are  extended  thereto  in  the  manner  here- 
inafter provided. 
Application  for  Extension  of  Rights  to  the  Northern  Provinces 

8.  (1)  The  proprietor  of  a  trade  mark  registered  before 
the  commencement  of  this  Ordinance  may  by  himself  or  his 
agent  apply  to  the  Registrar  for  the  extension  to  the  Northern 
Provinces  of  the  Protectorate  of  the  rights  and  privileges  con- 
ferred by  this  Ordinance  as  the  proprietor  of  such  trade  mark 
in  the  Colony  and  Southern  Provinces  of  the  Protectorate. 

Procedure 

(2)  The  provisions  of  this  Ordinance  relating  to  an  appli- 
cation for  the  registration  of  a  trade  mark  and  to  notice  of 
opposition  to  such  registration,  to  the  procedure  on  and  after 
such  application  or  notice,  and  to  the  power  of  the  Registrar 
and  the  Court  shall  mutatis  mutandis  apply  in  the  case  of  every 
application  under  sub-section  (1). 

Registration  of  Extension 

(3)  When  an  application  under  sub-section  (1)  has  been 
accepted  and  has  not  been  opposed,  and  the  time  for  notice  of 
opposition  has  expired,  or  having  been  opposed  the  opposition 
has  been  decided  in  favour  of  the  applicant,  the  Registrar  shall, 
unless  the  Court  otherwise  directs,  enter  in  the  register  a  notice 
that  the  rights  and  privileges  by  this  Ordinance  conferred  upon 
the  proprietor  of  the  trade  mark  in  respect  of  which  the  appli- 
cation has  been  made  are  extended  to  the  Northern  Provinces 
of  the  Protectorate. 

Inspection  of  Register  and  Granting  of  Certified  Copies 

9.  The  register  kept  under  this  Ordinance  shall  at  all  con- 
venient times  be  open  to  the  inspection  of  the  public,  subject  to 
the  provisions  of  this  Ordinance  and  to  such  regulations  as  may 
be  prescribed;  and  certified  copies  of  any  entry  in  any  such 
register  shall  be  given  to  any  persons  requiring  the  same,  on 
payment  of  the  prescribed  fee. 

REQISTBABLE  TBADE  MASKS 
Trade  Marks — What  Marks  Are  Registrable  as  Such 

10.  A  registrable  trade  mark  must  contain  or  consist  of  at 
least  one  of  the  following  essential  particulars: — 

(1)  The  name  of  a  company,  individual  or  firm  represented 
in  a  special  or  particular  manner; 

(2)  The  signature  of  the  applicant  for  registration  or  some 
predecessor  in  his  business; 

(3)  An  invented  word  or  invented  words; 

(4)  A  word  or  words  having  no  direct  reference  to  the 
character  or  quality  of  the  goods  and  not  being  according  to  its 


678  NIGERIA 

ordinary  signification  a  geographical  name  or  a  surname; 

(5)  Any  other  distinctive  mark;  but  a  name,  signature,  or 
word  or  words,  other  than  such  as  fall  within  the  description 
in  the  above  paragraphs  (1),  (2),  (3),  and  (4),  shall  not,  except 
by  order  of  the  Court,  be  deemed  a  distinctive  mark. 

For  the  purposes  of  this  section  " distinctive"  shall  mean 
adapted  to  distinguish  the  goods  of  the  proprietor  of  the  trade 
mark  from  those  of  other  persons. 

In  determining  whether  a  trade  mark  is  so  adapted  the 
Court  may,  in  the  case  of  a  trade  mark  in  actual  use,  take  into 
consideration  the  extent  to  which  such  user  has  rendered  such 
trade  mark  in  fact  distinctive  for  the  goods  with  respect  to 
which  it  is  registered  or  proposed  to  be  registered : 

Provided  always  that  any  mark  which  has  been  registered 
as  a  distinctive  mark  in  England  under  the  Trade  Marks  Act, 
1905,  shall  be  deemed  to  be  a  distinctive  mark  for  the  purpose 
of  this  Ordinance. 

Connexion  of  Trade  Mark  with  Goods 

11.  A  trade  mark  must  be  registered  for  particular  goods 
or  classes  of  goods.    The  applicant  shall  in  his  application  state 
goods  included  in  one  class  only.    If  the  applicant  desires  to 
register  the  same  mark  for  goods  falling  in  more  than  one  class, 
he  shall  make  a  separate  application  in  respect  of  each  class, 
and  each  of  such  applications  shall  be  treated  for  all  purposes 
as  separate  and  distinct  applications;  and  the  entries  on  the 
register  in  pursuance  of  such  application  shall  for  all  purposes 
be  deemed  to  relate  to  separate  and  distinct  trade  marks. 

Coloured  Trade  Marks 

12.  A  trade  mark  may  be  limited  in  whole  or  in  part  to 
one  or  more  specified  colours,  and  in  such  case  the  fact  that  it 
is  so  limited  shall  be  taken  into  consideration  by  any  tribunal 
having  to  decide  on  the  distinctive  character  of  such  trade  mark. 
If  and  so  far  as  a  trade  mark  is  registered  without  limitation 
of  colour  it  shall  be  deemed  to  be  registered  for  all  colours. 

Further  Restriction  on  Registration 

13.  It  shall  not  be  lawful  to  register  as  a  trade  mark  or 
part  of  a  trade  mark  any  matter  the  use  of  which  would,  by  rea- 
son of  its  being  calculated  to  deceive  or  otherwise,  be  disentitled 
to  protection  in  a  Court  of  Justice,  or  would  be  contrary  to  law 
or  morality,  or  any  scandalous  design. 

REGISTRATION  OF  TRADE  MARKS 
Application  for  Registration 

14.  (1)  Any  person  claiming  to  be  the  proprietor  of  a 


NIGERIA  679 

trade  mark  may  by  himself  or  his  agent  apply  to  the  Registrar 
for  the  registration  thereof. 

(2)  The  application  must  be  made  in  the  prescribed  form, 
and  must  be  accompanied  by  not  less  than  three  representa- 
tions of  the  trade  mark,  and  by  a  stereotype  block  of  such 
representation. 

(3)  The  applicant  must  state  the  particular  goods  or  classes 
of  goods  in  connexion  with  which  he  desires  his  trade  mark  to 
be  registered. 

(4)  The  application  must  be  left  with  or  sent  by  post  to 
the  Registrar. 

(5)  The  date  of  the  delivery  or  receipt  of  the  application 
shall  be  endorsed  thereon  and  recorded  in  the  Registrar's  Office. 

(6)  When  an  applicant  for  the  registration  of  a  trade  mark 
is  out  of  Nigeria  at  the  time  of  making  the  application,  he  shall 
give  the  Registrar  an  address  for  service  in  Nigeria,  and  if  he 
fails  to  do  so  the  Registrar  may  refuse  to  proceed  with  the 
application  until  the  address  has  been  given. 

Action  in  Regard  to  Application 

15.  (1)  Subject  to  the  provisions  of  this  Ordinance,  the 
Registrar  may  refuse  such  application  as  aforesaid,  or  may 
accept  it  absolutely  or  subject  to  conditions,  amendments,  or 
modification. 

(2)  In  case  of  any  such  refusal  or  conditional  acceptance 
the  Registrar  shall,  if  required  by  the  applicant,  state  in  writing 
the  grounds  of  his  decision  and  the  materials  used  by  him  in 
arriving  at  the  same,  and  such  decision  shall  be  subject  to  appeal 
to  the  Court. 

(3)  An  appeal  under  this  section,  shall  be  made  in  the  pre- 
scribed manner  and  on  such  appeal  the  Court  shall,  if  required, 
hear  the  applicant  and  the  Registrar,  and  shall  make  an  order 
determining  whether,  and  subject  to  what  conditions,  amend- 
ments, or  modifications,  if  any,  the  application  is  to  be  accepted. 

Disclaimer 

16.  If  a  trade  mark  contains  parts  not  separately  regis- 
tered by  the  proprietor  as  a  trade  mark,  or  if  it  contains  matter 
common  to  the  trade  or  otherwise  of  a  non-distinctive  character, 
the  Registrar  or  the  Court,  in  deciding  whether  such  trade  mark 
shall  be  entered  or  shall  remain  upon  the  register,  may  require, 
as  a  condition  of  its  being  upon  the  register,  that  the  proprietor 
shall  disclaim  any  right  to  the  exclusive  use  of  any  part  or 
parts  of  such  trade  mark,  or  all  or  any  portion  of  such  matter, 
to  the  exclusive  use  of  which  they  hold  him  not  to  be  entitled, 
or  that  he  shall  make  such  other  disclaimer  as  they  may  con- 


680  NIGERIA 

sider  needful  for  the  purpose  of  defining  his  rights  under  such 
registration :  Provided  always  that  no  disclaimer  upon  the  reg- 
ister shall  affect  any  rights  of  the  proprietor  of  a  trade  mark, 
except  such  as  arise  out  of  the  registration  of  the  trade  mark 
in  respect  of  which  the  disclaimer  is  made. 

Advertisement  of  Application 

17.  Every  application  for  registration  of  a  trade  mark 
under  this  Ordinance  and  a  representation  of  such  mark  shall, 
as  soon  as  may  be  after  its  receipt,  be  advertised  by  the  Regis- 
trar in  the  Gazette,  unless  the  Registrar  refuses  to  entertain 
the  application. 

Opposition  to  Registration 

18.  (1)  Any  person  may,  within  three  months,  or  such 
further  time,  not  exceeding  nine  months  in  all,  as  the  Registrar 
may  allow,  of  the  advertisement  of  the  application,  give  notice 
to  the  Registrar  of  opposition  to  such  registration. 

(2)  Such  notice  shall  be  given  in  writing  and  in  duplicate, 
and  shall  include  a  statement  of  the  grounds  of  opposition. 

(3)  The  Registrar  shall  send  a  copy  of  such  notice  to  the 
applicant,  and  within  one  month  after  the  receipt  of  such  notice, 
or  such  further  time,  not  exceeding  three  months  in  all,  as  the 
Registrar  may  allow,  the  applicant  shall  send  to  the  Registrar 
a  counter-statement  in  duplicate  of  the  grounds  on  which  he 
relies  for  his  application,  and,  if  he  does  not  do  so,  he  shall  be 
deemed  to  have  abandoned  his  application. 

(4)  If  the  applicant  send  such  counter-statement  the  Regis- 
trar shall  furnish  a  copy  thereof  to  the  person  giving  notice  of 
opposition,  and  shall  require  him  to  give  security  in  such  man- 
ner and  to  such  amount  as  the  Registrar  may  require  for  such 
costs  as  may  be  awarded  in  respect  of  such  opposition,  and  if 
such  security  is  not  given  within  fourteen  days  after  such  re- 
quirement was  made,  or  such  further  time  as  the  Registrar  may 
allow,  the  opposition  shall  be  deemed  to  be  withdrawn. 

(5)  If  the  person  who  gave  notice  of  opposition  duly  gives 
such  security  as  aforesaid,  the  Registrar  shall  inform  the  ap- 
plicant thereof  in  writing,  and  thereafter  the  case  shall  be 
deemed  to  stand  for  the  determination  of  the  Court. 

(6)  Where  the  opponent  is  out  of  Nigeria  he  shall,  with 
the  notice  of  opposition  to  registration,  give  the  Registrar  an 
address  for  service  in  Nigeria. 

Cases:   How  Brought  Before  the  Court 

19.  (1)  When  a  case  stands  for  the  determination  of  the 
Court  under  the  provisions  of  the  last  preceding  section,  the 
Registrar  shall  require  the  applicant  within  two  months,  or 


NIGERIA  681 

such  further  time  as  the  Registrar  shall  allow,  to  make  a  written 
application  to  the  Court  for  an  order  that,  notwithstanding  the 
opposition  of  which  notice  has  been  given,  the  registration  of 
the  trade  mark  be  proceeded  with  by  the  Registrar,  or  to  take 
such  other  proceedings  as  may  be  proper  and  necessary  for  the 
determination  of  the  case  by  the  Court. 

(2)  The  applicant  shall  thereupon  make  his  application  or 
take  such  other  proceedings  as  aforesaid,  within  the  period  of 
two  months  above  named  or  such  further  time  as  the  Registrar 
may  allow,  and  shall  also  within  the  like  period  give  notice 
thereof  to  the  Registrar. 

(3)  If  the  applicant  shall  fail  to  make  such  application  or 
to  take  such  other  proceedings,  of  which  failure  the  non-receipt 
by  the  Registrar  of  the  said  notice  shall  be  sufficient  proof,  the 
applicant  shall  be  deemed  to  have  abandoned  his  application. 

Costs 

20.  The  Court  shall  have  power  in  proceedings  under  the 
last  two  preceding  sections  of  this  Ordinance  to  award  to  any 
party  such  costs  as  it  may  consider  reasonable,  and  to  direct 
how  and  by  what  parties  they  are  to  be  paid. 

Date  of  Registration 

21.  "When  an  application  for  registration  of  a  trade  mark 
has  been  accepted  and  has  not  been  opposed,  and  the  time  for 
notice  of  opposition  has  expired,  or,  having  been  opposed,  the 
opposition  has  been  decided  in  favour  of  the  applicant,  the 
Registrar  shall,  unless  the  Court  otherwise  direct,  register  the 
said  trade  mark,  and  the  trade  mark,  when  registered,  shall  be 
registered  as  of  the  date  of  the  application  for  registration,  and 
such  date  shall  be  deemed  for  the  purposes  of  this  Ordinance 
to  be  the  date  of  registration. 

Certificate  to  Registration 

22.  The  Registrar  shall  have  a  seal,  and  on  the  registra- 
tion of  a  trade  mark  the  Registrar  shall  issue  to  the  applicant 
a  certificate  in  the  prescribed  form  of  the  registration  of  such 
trade  mark  under  the  hand  and  seal  of  the  Registrar. 

Advertisement  of  Application 

23.  When  an  application  for  registration  of  trade  mark 
has  been  accepted,  whether  absolutely  or  subject  to  conditions, 
the  Registrar  shall,  as  soon  as  may  be  after  such  acceptance, 
cause  the  application  as  accepted  to  be  advertised  in  the  Gazette. 
Such  advertisement  shall  set  forth  all  conditions  subject  to 
which  the  application  has  been  accepted. 

Limit  of  Time  for  Proceeding  with  Application 

24.  Where  the  registration  of  a  trade  mark  is  not  com- 


682  NIGERIA 

pleted  within  twelve  months  from  the  date  of  the  application, 
by  reason  of  default  on  the  part  of  the  applicant,  the  Registrar 
may,  after  giving  notice  in  writing  of  the  non-completion  to  the 
applicant  or  to  his  agent  (if  any),  treat  the  application  as  aban- 
doned, unless  it  is  completed  before  the  expiration  of  fourteen 
days  from  such  notice  or  of  such  further  time  as  the  Registrar 
may  in  special  cases  permit. 

IDENTICAL,  TRADE  MARKS 

25.  Except  by  order  of  the  Court  or  in  the  case  of  trade 
marks  in  use  before  the  thirtieth  day  of  March,  one  thousand 
nine  hundred  and  one,  no  trade  mark  shall  be  registered  in 
respect  of  any  goods  or  description  of  goods  which  is  identical 
with  one  belonging  to  a  different  proprietor  which  is  already 
on  the  register  with  respect  to  such  goods  or  description  of 
goods,  or  so  nearly  resembling  such  a  trade  mark  as  to  be  cal- 
culated to  deceive. 

Rival  Claims  to  Identical  Marks 

26.  Where  each  of  several  persons  claims  to  be  proprietor 
of  the  same  trade  mark  or  of  nearly  identical  trade  marks  in 
respect  of  the  same  goods  or  description  of  goods,  and  to  be 
registered  as  such  proprietor,  the  Registrar  may  refuse  to 
register  any  of  them  until  their  rights  have  been  determined 
by  the  Court  or  have  been  settled  by  agreement  in  a  manner 
approved  by  him. 

Concurrent  User 

27.  In  case  of  honest  concurrent  user  or  of  other  special 
circumstances  which,  in  the  opinion  of  the  Court  make  it  proper 
so  to  do,  the  Court  may  permit  the  registration  of  the  same 
trade  mark,  or  of  nearly  identical  trade  marks,  for  the  same 
goods  or  description  of  goods  by  more  than  one  proprietor, 
subject  to  such  conditions  and  limitations,  if  any,  as  to  mode 
or  place  for  use  or  otherwise,  as  it  may  think  it  right  to  impose. 

ASSIGNMENT 
Assignment  and  Transmission  of  Trade  Mark 

28.  A  trade  mark  when  registered  shall  be  assigned  and 
transmitted  only  in  connexion  with  the  goodwill  of  the  business 
concerned  in  the  particular  goods  or  classes  of  goods  for  which 
it  has  been  registered,  and  shall  be  determined  with  that  good- 
will. 

Apportionment  of  Marks  on  Dissolution  of  Partnerships 

29.  In  any  case  where  from  any  cause,  whether  by  reason 
of  dissolution  of  partnership  or  otherwise,  a  person  ceases  to 
carry  on  business  and  the  goodwill  of  such  person  does  not  pass 


NIGERIA  683 

to  one  successor  but  is  divided,  the  Registrar  may  (subject  to 
the  provisions  of  this  Ordinance  as  to  associated  trade  marks), 
on  the  application  of  the  parties  interested,  permit  an  appor- 
tionment of  the  registered  trade  marks  of  the  person  ceasing 
to  carry  on  business  among  the  persons  in  fact  continuing  the 
business,  subject  to  such  conditions  and  modifications,  if  any, 
as  he  may  think  necessary  in  the  public  interest.  Any  decision 
of  the  Registrar  under  this  section  shall  be  subject  to  appeal 
to  the  Court. 

ASSOCIATED  TRADE  MARKS 

30.  If  application  be  made  for  the  registration  of  a  trade 
mark  so  closely  resembling  a  trade  mark  of  the  applicant  al- 
ready on  the  register  for  the  same  goods  or  description  of 
goods  as  to  be  calculated  to  deceive  or  cause  confusion  if  used 
by  a  person  other  than  the  applicant,  the  tribunal  hearing  the 
application  may  require  as  a  condition  of  registration  that  such 
trade  marks  shall  be  entered  on  the  register  as  associated  trade 
marks. 

Combined  Trade  Marks 

31.  If  the  proprietor  of  a  trade  mark  claims  to  be  entitled 
to  the  exclusive  use  of  any  portion  of  such  trade  mark  sepa- 
rately, he  may  apply  to  register  the  same  as  separate  trade 
marks.    Each  separate  trade  mark  must  satisfy  all  the  condi- 
tions and  shall  have  all  the  incidents  of  an  independent  trade 
mark,  except  that,  when  registered,  it,  and  the  trade  mark  of 
which  it  forms  a  part,  shall  be  deemed  to  be  associated  trade 
marks  and  shall  be  entered  on  the  register  as  such,  but  the  user 
of  the  whole  trade  mark  shall,  for  the  purposes  of  this  Ordi- 
nance, be  deemed  to  be  also  a  user  of  such  registered  trade 
marks  belonging  to  the  same  proprietor  as  it  contains. 

Series  of  Trade  Marks 

32.  When  a  person  claiming  to  be  the  proprietor  of  several 
trade  marks  for  the  same  description  of  goods  which,  while 
resembling  each  other  in  the  material  particulars  thereof,  yet 
differ  in  respect  of — 

a)  statements  of  the  goods  for  which  they  are  respectively 
used  or  proposed  to  be  used ;  or 

b)  statements    of   number,   price,   quality,    or   names    of 
places;  or 

c)  other  matter  of  a  non-distinctive  character  which  does 
not  substantially  affect  the  identity  of  the  trade  mark;  or 

d)  colour; 

seeks  to  register  such  trade  marks,  they  may  be  registered  as  a 
series  in  one  registration.  All  the  trade  marks  in  a  series  of 


684  NIGERIA 

trade  marks  so  registered  shall  be  deemed  to  be,  and  shall  be 
registered  as  associated  trade  marks. 

Assignment  and  User  of  Associated  Trade  Marks 

33.  Associated  trade  marks  shall  be  assignable  or  trans- 
missible only  as  a  whole  and  not  separately,  but  they  shall  for 
all  other  purposes  be  deemed  to  have  been  registered  as  separate 
trade  marks :  Provided  that  where  under  the  provisions  of  this 
Ordinance  user  of  a  registered  trade  mark  is  required  to  be 
proved  for  any  purpose,  the  tribunal  may,  if  and  so  far  as  it 
shall  think  right,  accept  user  of  an  associated  registered  trade 
mark,  or  of  the  trade  mark  with  additions  or  alterations  not 
substantially  affecting  its  identity,  as  an  equivalent  for  such 
user. 

DURATION   AND   RENEWAL,   OF   REGISTRATION 

Duration  of  Registration 

34.  The  registration  of  a  trade  mark  shall  be  for  a  period 
of  fourteen  years,  but  may  be  renewed  from  time  to  time  in 
accordance  with  the  provisions  of  this  Ordinance. 

Renewal  of  Registration 

35.  The  Registrar  shall,  on  application  made  by  the  regis- 
tered proprietor  of  a  trade  mark,  in  the  prescribed  manner  and 
within  the  prescribed  period,  renew  the  registration  of  such 
trade  mark  for  a  period  of  fourteen  years  from  the  expiration 
of  the  original  registration  or  of  the  last  renewal  of  registra- 
tion, as  the  case  may  be,  which  date  is  herein  termed  the  expira- 
tion of  the  last  registration. 

Procedure  on  Expiry  of  Period  of  Registration 

36.  At  the  prescribed  time  before  the  expiration  of  the 
last  registration  of  a  trade  mark  the  Registrar  shall  send  notice 
in  the  prescribed  manner  to  the  registered  proprietor  at  his 
registered  address  of  the  date  at  which  the  existing  registra- 
tion will  expire  and  the  conditions  as  to  payment  of  fees  and 
otherwise  upon  which  a  renewal  of  such  registration  may  be 
obtained,  and  if  at  the  expiration  of  the  time  prescribed  in  that 
behalf  such  conditions  have  not  been  duly  complied  with,  the 
Registrar  may  remove  such  trade  mark  from  the  register,  sub- 
ject to  such  conditions  (if  any)  as  to  its  restoration  to  the 
register  as  may  be  prescribed. 

Status  of  Unrenewed  Trade  Mark 

37.  Where  a  trade  mark  has  been  removed  from  the  regis- 
ter for  non-payment  of  the  fee  for  renewal,  such  trade  mark 
shall,  nevertheless,  for  the  purpose  of  any  application  for  regis- 
tration during  one  year  next  after  the  date  of  such  removal,  be 
deemed  to  be  a  trade  mark  which  is  already  registered,  unless 


NIGERIA  685 

it  is  shown  to  the  satisfaction  of  the  Registrar  that  there  has 
been  no  bona  fide  trade  user  of  such  trade  mark  during  the  two 
years  immediately  preceding  such  removal. 

CORRECTION  AND  RECTIFICATION  OF  APPLICATIONS,  OR  OF 

THE  REGISTER 
Registrar  May  Correct  Formal  Errors  in  Applications 

38.  The  Registrar  may,  on  request  in  writing,  accompanied 
by  the  prescribed  fee — 

a)  correct  any  clerical  error  in  or  in  connexion  with  an 
application  for  the  registration  of  a  trade  mark;  or 

b)  permit  an  applicant  for  registration  of  a  trade  mark  to 
amend  his  application  by  omitting  any  particular  goods  or 
classes  of  goods  in  connexion  with  which  he  has  desired  the 
trade  mark  to  be  registered. 

Correction  of  Register 

39.  The  Registrar  may,  on  request  made  in  the  prescribed 
manner  by  the  registered  proprietor  or  by  some  person  entitled 
by  law  to  act  in  his  name — 

(1)  correct  any  error  in  the  name  or  address  of  the  regis- 
tered proprietor  of  a  trade  mark;  or 

(2)  enter  any  change  in  the  name  or  address  of  the  person 
who  is  registered  as  proprietor  of  a  trade  mark ;  or 

(3)  cancel  the  entry  of  a  trade  mark  on  the  register;  or 

(4)  strike  out  any  goods  or  classes  of  goods  from  those  for 
which  a  trade  mark  is  registered;  or 

(5)  enter  a  disclaimer  or  memorandum  relating  to  a  trade 
mark  which  does  not  in  any  way  extend  the  rights  given  by  the 
existing  registration  of  such  trade  mark. 

Any  decision  of  the  Registrar  under  this  section  shall  be 
subject  to  appeal  to  the  Court. 

Entry  in  Register  of  Assignments 

40.  Subject  to  the  provisions  of  this  Ordinance,  where  a 
person  becomes  entitled  by  assignment,  transmission,  or  other 
operation  of  the  law  to  a  registered  trade  mark,  the  Registrar 
shall,  on  request  made  in  the  prescribed  manner  and  on  proof 
of  title  to  his  satisfaction,  cause  the  name  and  address  of  such 
person  to  be  entered  as  proprietor  of  the  trade  mark  in  the 
register  of  trade  marks,  provided  that  any  decision  of  the  Regis- 
trar under  this  section  shall  be  subject  to  appeal  to  the  Court. 

Application  to  Alter  Registered  Trade  Mark 

41.  (1)  The  registered  proprietor  of  any  registered  trade 
mark  may  apply  to  the  Registrar  for  leave  to  add  to  or  alter 
such  mark  in  any  manner  not  substantially  affecting  the  identity 
of  the  same,  and  the  Registrar  may  refuse  or  grant  leave  on 


686  NIGERIA 

such  terms  as  he  may  think  fit;  but  any  such  refusal  or  con- 
ditional permission  shall  be  subject  to  appeal  to  the  Court. 

Prescribed  Manner 

(2)  If  leave  be  granted,  the  mark  as  altered  shall  be  adver- 
tised in  the  prescribed  manner ;  and  the  Registrar  shall,  on  pay- 
ment of  the  prescribed  fee,  cause  the  register  to  be  altered  in 
conformity  with  the  order  of  leave. 

Rectification  of  Register  by  the  Court 

42.  (1)  The  Court  may,  on  the  application  of  any  person 
aggrieved  by  the  omission  without  sufficient  cause  of  the  name 
of  any  person  or  of  any  other  particulars  from  the  register  kept 
under  this  Ordinance  or  by  any  entry  made  without  sufficient 
cause  in  any  such  register,  or  by  any  entry  wrongfully  remain- 
ing on  the  register,  make  such  order  for  making,  expunging, 
or  varying  the  entry  as  the  Court  thinks  fit,  or  the  Court  may 
refuse  the  application,  and  in  either  case  may  make  such  order 
with  respect  to  the  costs  of  the  proceedings  as  the  Court 
thinks  fit. 

(2)  The  Court  may,  in  any  proceedings  under  this  section, 
decide  any  question  that  it  may  be  necessary  or  expedient  to 
decide  for  the  rectification  of  a  register,  and  may  direct  an  issue 
to  be  tried  for  the  decision  of  any  question  of  fact,  and  may 
award  damages  to  the  party  aggrieved. 

(3)  Notice  of  any  intended  application  to  the  Court  under 
this  section  shall  be  given  to  the  Registrar  by  the  applicant, 
and  the  Registrar  shall  be  entitled  to  be  heard  on  the  application. 

(4)  In  case  of  fraud  in  the  registration  or  transmission  of 
a  registered  trade  mark,  the  Registrar  may  himself  apply  to 
the  Court  under  the  provisions  of  this  section. 

(5)  If  any  order  of  the  Court  rectifying  the  register  is 
made,  the  Registrar  shall,  on  proof  thereof  and  on  payment  of 
the  prescribed  fee,  cause  the  register  to  be  altered  in  conformity 
with  such  order. 

Trade  Marks  Registered  Under  Previous  Enactments 

43.  No  trade  mark  which  is  upon  the  register  at  the  com- 
mencement of  this  Ordinance  and  which  under  this  Ordinance 
is  a  registrable  trade  mark  shall  be  removed  from  the  register 
on  the  ground  that  it  was  not  registrable  under  the  Ordinance 
in  force  at  the  date  of  its  registration.    But  nothing  in  this 
section  contained  shall  subject  any  person  to  any  liability  in 
respect  of  any  act  or  thing  done  before  the  commencement  of 
this  Ordinance  to  which  he  would  not  have  been  subject  under 
the  Ordinance  then  in  force. 


NIGERIA  687 

Non-user  of  Trade  Mark 

44.  A  registered  trade  mark  may,  on  the  application  to 
the  Court  of  any  person  aggrieved,  be  taken  off  the  register  in 
respect  of  any  of  the  goods  for  which  it  is  registered,  on  the 
ground  that  it  was  registered  by  the  proprietor  or  a  predecessor 
in  title  without  any  bona  fide  intention  to  use  the  same  in  con- 
nexion with  such  goods  and  there  has  in  fact  been  no  bona  fide 
user  of  the  same  in  connexion  therewith,  or  on  the  ground  that 
there  has  been  no  bona  fide  user  of  such  trade  mark  in  con- 
nexion with  such  goods  during  the  five  years  immediately  pre- 
ceding the  application,  unless  in  either  case  such  non-use  is 
shown  to  be  due  to  special  circumstances  in  the  trade  and  not 
to  any  intention  not  to  use  or  to  abandon  such  trade  mark  in 
respect  of  such  goods. 

EFFECT  OF  REGISTRATION 
Powers  of  Registered  Proprietor 

45.  Subject  to  the  provisions  of  this  Ordinance — 

(1)  The  person  for  the  time  being  entered  in  the  register 
as  proprietor  of  a  trade  mark  shall,  subject  to  any  rights  ap- 
pearing from  such  register  to  be  vested  in  any  other  person, 
have  power  to  assign  the  same,  and  to  give  effectual  receipt 
for  any  consideration  for  such  assignment. 

(2)  Any  equities  in  respect  of  a  trade  mark  may  be  en- 
forced in  like  manner    as    in    respect  of  any  other  personal 
property. 

Rights  of  Proprietor  of  Trade  Mark 

46.  Subject  to  the  provisions  of  section  48  of  this  Ordi- 
nance and  to  any  limitations  and  conditions  entered  upon  the 
register,  the  registration  of  a  person  as  proprietor  of  a  trade 
mark  shall,  if  valid,  give  to  such  person  the  exclusive  right  to 
the  use  of  such  trade  mark  upon  or  in  connexion  with  the  goods 
in  respect  of  which  it  is  registered :  Provided  always  that  where 
two  or  more  persons  are  registered  proprietors  of  the  same 
or  substantially  the  same  trade  mark  in  respect  of  the  same 
goods,  no  right  of  exclusive  use  of  such  trade  mark  shall  (except 
so  far  as  their  respective  rights  shall  have  been  defined  by  the 
Court)  be  acquired  by  any  one  of  such  persons  as  against  any 
other  by  the  registration  thereof,  but  each  of  such  persons  shall 
otherwise  have  the  same  rights  as  if  he  were  the  sole  registered 
proprietor  thereof. 

Registration  to  be  Prima  Facie  Evidence  of  Validity 

47.  In  all  legal  proceedings  relating  to  a  registered  trade 
mark  (including  applications  under  section  42  of  this  Ordi- 
nance) the  fact  that  a  person  is  registered  as  proprietor  of  suoh 


688  NIGERIA 

trade  mark  shall  be  prima  facie  evidence  of  the  validity  of  the 
original  registration  of  such  trade  mark  and  of  all  subsequent 
assignments  and  transmissions  of  the  same. 

Registration  to  be  Conclusive  After  Seven  Years 

48.  In  all  legal  proceedings  relating  to  a  registered  trade 
mark   (including  applications  under  section  42  of  this  Ordi- 
nance) the  original  registration  of  such  trade  mark  shall,  after 
the  expiration  of  seven  years  from  the  date  of  such  original 
registration  (or  seven  years  from  the  commencement  of  this 
Ordinance,  whichever  shall  last  happen),  be  taken  to  be  valid 
in  all  respects  unless  such  original  registration  was  obtained 
by  fraud,  or  unless  the  trade  mark  offends  against  the  pro- 
visions of  section  13  of  this  Ordinance:  Provided  that  nothing 
in  the  Ordinance  shall  entitle  the  proprietor  of  a  registered 
trade  mark  to  interfere  with  or  restrain  the  use  by  any  person 
of  a  similar  trade  mark  upon  or  in  connexion  with  goods  upon 
or  in  connexion  with  which  such  person  has,  by  himself  or  his 
predecessors  in  business,  continuously  used  such  trade  mark 
from  a  date  anterior  to  the  use  of  the  first-mentioned  trade 
mark  by  the  proprietor  thereof  or  his  predecessors  in  business, 
or  to  object  (on  such  use  being  proved)  to  such  person  being 
put  upon  the  register  for  such  similar  trade  mark  in  respect  of 
such  goods  under  the  provisions  of  section  27  of  this  Ordinance. 

No  Protection  for  Unregistered  Trade  Marks 

49.  No  person  shall  be  entitled  to  institute  any  proceed- 
ings to  prevent,  or  to  recover  damages  for,  the  infringement 
of  an  unregistered  trade  mark  unless  such  trade  mark  has  been 
in  use  for  not  less  than  three  years  prior  to  the  commencement 
of  such  proceedings,  and  has  been  refused  registration  under 
this  Ordinance.    The  Registrar  may,  on  request,  grant  a  cer- 
tificate that  such  registration  has  been  refused. 

Action  for  Infringement 

50.  In  an  action  for  the  infringement  of  a  trade  mark  the 
Court  trying  the  question  of  infringement  shall  admit  evidence 
of  the  usages  of  the  trade  in  respect  of  the  get-up  of  the  goods 
for  which  the  trade  mark  is  registered,  and  of  any  trade  marks 
or  get-up  legitimately  used  in  connexion  with  such  goods  by 
other  persons. 

No  Interference  with  Bona  Fide  User  of  Name,  or  Description 

of  Goods 

51.  No  registration  under  this  Ordinance  shall  interfere 
with  any  bona  fide  use  by  a  person  of  his  own  name  or  place  of 
business  or  that  of  any  of  his  predecessors  in  business  or  the 


NIGERIA  689 

use  by  any  person  of  any  bona  fide  description  of  the  character 
or  quality  of  his  goods. 

Action  for  Passing  Off  Goods  ' 

52.  Nothing  in  this  Ordinance  shall  be  deemed  to  affect 
the  rights  of  action  against  any  person  for  passing  off  goods 
as  those  of  another  person  or.  the  remedies  in  respect  thereof. 

LEGAL  PROCEEDINGS 
Certificates  of  Validity 

53.  In  any  legal  proceeding  in  which  the  validity  of  the 
registration  of  a  registered  trade  mark  comes  into  question  and 
is  decided  in  favour  of  the  proprietor  of  such  trade  mark,  the 
Court  so  deciding  may  certify  the  same,  and,  if  it  so  certifies, 
then,  in  any  subsequent  legal  proceeding  in  which  such  validity 
comes  into  question,  the  proprietor  of  the  said  trade  mark,  on 
obtaining  a  final  order  or  judgment  in  his  favor,  shall  have  his 
full  costs,  charges,  and  expenses  as  between  solicitor  and  client, 
unless  in  such  subsequent  proceeding  the  Court  certifies  that 
he  ought  not  to  have  the  same. 

Procedure  Before  the  Court 

54.  Every  application  made  to  the  Court  under  sections 
41  and  42  and  all  proceedings  thereunder  shall  be  conducted  in 
such  manner  as  the  Court  may  direct. 

COSTS 

55.  In  all  proceedings  before  the  Court  under  this  Ordi- 
nance the  costs  of  the  Registrar  shall  be  in  the  discretion  of 
the  Court,  but  the  Registrar  shall  not  be  ordered  to  pay  the 
costs  of  any  other  of  the  parties. 

EVIDENCE 
Certified  Copies  to  be  Admitted  as  Evidence 

56.  Printed  or  written  copies  or  extracts,  purporting  to  be 
certified  by  the  Registrar,  of  or  from  any  document,  register, 
and  other  books  filed  or  kept  under  this  Ordinance  in  his  office, 
shall  be  admitted  in  evidence  in  all  Courts  in  Nigeria  and  in 
all  proceedings  without  further  proof  or  production  of  the 
originals. 

Certificate  of  Registration  to  be  Prima  Facie  Evidence 

57.  A  certificate  purporting  to  be  under  the  hand  of  the 
Registrar  as  to  any  entry,  matter,  or  thing  which  he  is  author- 
ised by  this  Ordinance,  or  any  rules  made  thereunder,  to  make 
or  do,  shall  be  prima  facie  evidence  of  the  entry  having  been 
made  and  of  the  contents  thereof,  and  of  the  matter  or  thing 
having  been  done  or  left  undone. 

Applications  May  be  Sent  by  Post 

58.  (1)  Any  application,  notice,  or  other  document  author- 


690  NIGERIA 

ised  or  required  to  be  left  with,  made,  or  given  to  the  Registrar 
or  to  any  other  person  under  this  Ordinance,  may  be  sent  by 
a  registered  letter  through  the  post,  and  if  so  sent  shall  be 
deemed  to  have  been  so  left,  made,  or  given  respectively  at  the 
time  when  the  letter  containing  the  same  would  be  delivered  in 
the  ordinary  course  of  post. 

(2)  In  proving  such  service  or  sending,  it  shall  be  suf- 
ficient to  prove  that  the  letter  was  properly  addressed  and  regis- 
tered at  the  Post  Office. 

POWERS  AND  DUTIES  OF  REGISTRAR  OP  TRADE  MARKS 
Exercise  of  Discretionary  Power  by  Registrar 

59.  Where  any  discretionary  or  other  power  is  given  to 
the  Registrar  by  this  Ordinance  or  rules  made  thereunder,  he 
shall  not  exercise  that  power  adversely  to  the  applicant  for 
registration  or  the  registered  proprietor  of  the  trade  mark  in 
question  without  (if  duly  required  so  to  do  within  the  prescribed 
time)  giving  such  applicant  or  registered  proprietor  an  oppor- 
tunity of  being  heard. 

Registrar  May  Apply  to  Attorney  General  for  Directions 

60.  The  Registrar  may,  in  any  case  of  doubt  or  difficulty 
arising  in  the  administration  of  any  of  the  provisions  of  this 
Ordinance,  apply  to  the  Attorney  General  for  directions  in  the 
matter. 

POWER  TO  MAKE  REGULATIONS  AS  TO  FEES,  ETC. 
Power  to  Make  Regulations 

61.  The  Governor  in  Council  may  make  Regulations,  pre- 
scribe such  forms,  and  generally  do  such  things  as  he  thinks 
expedient,  subject  to  the  provisions  of  this  Ordinance — 

a)  for  regulating  the  practice  of  registration  under  this 
Ordinance ; 

b)  for  classifying  goods  for  the  purposes  of  registration 
of  trade  marks ; 

c)  prohibiting  the  registration  in  respect  of  any  specified 
class  of  goods,  unless  such  trade  mark  has  been,  and  is,  regis- 
tered in  the  United  Kingdom  in  respect  of  such  goods ; 

d)  for  prescribing  the  fees  payable  in  respect  of  applica- 
tions and  registrations  and  other  matters  under  the  Ordinance, 
and  the  mode  of  payment  of  the  same ; 

e)  generally  for  regulating  all  things  by  this  Ordinance 
placed  under  the  direction  or  control  of  the  Registrar ; 

f )  for  altering  or  revoking  the  regulations  made  under  this 
Ordinance. 

SPECIAL  TRADE  MARKS 
Standardisation,  &c.,  of  Trade  Marks 

62.  Where  any  association  or  person  undertakes  the  exam- 


NIGERIA  691 

ination  of  any  goods  in  respect  of  origin,  material,  mode  of 
manufacture,  quality,  accuracy,  or  other  characteristic,  and  cer- 
tifies the  result  of  such  examination  by  mark  used  upon  or  in 
connexion  with  such  goods,  the  Registrar  may,  if  he  shall  judge 
it  to  be  to  the  public  advantage,  permit  such  association  or  per- 
son to  register  such  mark  as  a  trade  mark  in  respect  of  such 
goods,  whether  or  not  such  association  or  person  be  a  trading 
association  or  trader  or  possessed  of  a  goodwill  in  connexion 
with  such  examination  and  certifying.  When  so  registered,  such 
trade  mark  shall  be  deemed  in  all  respects  to  be  a  registered 
trade  mark,  and  such  association  or  person  to  be  the  proprietor 
thereof,  save  that  such  trade  mark  shall  be  transmissible  or 
assignable  only  by  permission  of  the  Registrar. 

TBADE  MARKS  REGISTERED  IN  GREAT  BRITAIN 
Registration  of  British  Trade  Marks 

63.  (1)  Any  person  who  has  registered  a  trade  mark  in 
Great  Britain  shall  be  entitled  to  registration  of  his  trade  mark 
under  this  Ordinance  in  priority  to  other  applicants,  and  such 
registration  shall  have  the  same  date  as  the  application  for 
registration  in  Great  Britain,  provided  that  his  application  is 
made  within  four  months  from  his  applying  for  protection  in 
Great  Britain: 

Provided  that  nothing  in  this  section  contained  shall  entitle 
the  proprietor  of  the  trade  mark  to  recover  damages  for  in- 
fringements happening  prior  to  the  date  of  the  actual  registra- 
tion of  his  trade  mark  in  Nigeria. 

(2)  The  use  in  Nigeria  during  the  period  aforesaid  of  the 
trade  mark  shall  not  invalidate  the  registration  of  the  trade 
mark. 

(3)  The  application  for  the  registration  of  a  trade  mark 
under  this  section  must  be  made  in  the  same  manner  as  an 
ordinary  application  under  this  Ordinance:  Provided  that  any 
trade  mark  the  registration  of  which  has  been  duly  obtained  in 
Great  Britain  may  be  registered  under  this  Ordinance. 

Powers  of  Customs  Authorities  to  Detain  Goods  in 
Certain  Cases 

64.  Any  person  who  has  duly  registered  his  trade  mark 
in  respect  of  any  goods  in  Great  Britain  may,  by  himself,  his 
agent  or  representative  in  Nigeria,  on  giving  notice  in  writing 
to  the  Comptroller  of  Customs,  or  other  proper  Officer  of  Cus- 
toms that  goods  bearing  a  mark  so  nearly  resembling  his  trade 
mark  as  to  be  well  calculated  to  deceive  are  being  imported  into 
Nigeria,  cause  the  said  goods  to  be  detained  by  such  Comptrol- 
ler or  other  proper  Officer  of  Customs,  until  the  rights  of  the 

PATENT  DEPARTMENT 

F1SK  RUBBER  CO. 
CUDAHY, 


692  NIGERIA 

matter  have  been  determined  according  to  law:  Provided  that 
any  such  informant  shall  reimburse  to  the  Comptroller  of  Cus- 
toms, or  other  proper  Officer  of  Customs,  all  expenses  and 
damages  incurred  in  respect  of  such  detention  made  on  his 
information,  and  of  any  proceedings  consequent  on  such  de- 
tention. 

OFFENCES 

65.  (1)  If  any  person  makes  or  causes  to  be  made  a  false 
entry  in  the  register  kept  under  this  Ordinance,  or  a  writing 
falsely  purporting  to  be  a  copy  of  an  entry  in  such  register,  or 
produces,  or  tenders,  or  causes  to  be  produced  or  tendered  in 
evidence  any  such  writing,  knowing  the  entry  or  writing  to  be 
false,  he  shall  be  guilty  of  an  offense,  and  shall  be  liable  to 
imprisonment  for  seven  years. 

(2)  Any  person  who  represents  any  trade  mark  as  regis- 
tered, which  is  not  so,  shall  be  guilty  of  an  offense,  and  liable 
to  a  fine  of  five  pounds. 

A  person  shall  be  deemed,  for  the  purposes  of  this  section, 
to  represent  that  a  trade  mark  is  registered  if  he  uses  in  con- 
nexion with  the  trade  mark  the  word  " registered"  or  any  word 
or  words  expressing  or  implying  that  registration  has  been 
obtained  for  the  trade  mark. 

(3)  If  any  person,  without  the  authority  of  His  Majesty, 
uses  in  connexion  with  any  trade,  business,  calling,  or  profes- 
sion, the  Royal  Arms  (or  arms  so  closely  resembling  the  same 
as  to  be  calculated  to  deceive)  in  such  manner  as  to  be  calcu- 
lated to  lead  to  the  belief  that  he  is  duly  authorised  so  to  use 
the  Royal  Arms,  or  if  any  person  without  the  authority  of  His 
Majesty  or  of  a  member  of  the  Royal  Family,  uses  in  connexion 
with  any  trade,  business,   calling,   or  profession  any  device, 
emblem,  or  title  in  such  manner  as  to  be  calculated  to  lead  to 
the  belief  that  he  is  employed  by  or  supplies  goods  to  His 
Majesty  or  such  member  of  the  Royal  Family,  he  shall  be  guilty 
of  an  offence  and  liable  to  a  fine  of  twenty  pounds:  Provided 
that  nothing  in  this  subsection  shall  be  construed  as  affecting 
the  right,  if  any,  of  the  proprietor  of  a  trade  mark  containing 
any  such  arms,  device,  emblem,  or  title  to  continue  to  use  such 
trade  mark. 

INTERNATIONAL  AND  INTERCOLONIAL  ARRANGEMENTS 
International  Arrangements — Priority  Registration 

66.  (1)  If  His  Majesty  is  pleased  by  Order  in  Council  to 
apply  the  provisions  of  Section  ninety-one  of  the  Imperial  Act 
entitled  "The  Patents  and  Designs  Act,  1907"*  to  the  Colony, 

*  For  provisions  in  question,  see  Great  Britain. 


NIGERIA  693 

then  any  person  who  has  applied  for  protection  for  any  trade 
mark  in  any  foreign  State  with  the  Government  of  which  His 
Majesty  has  made  an  arrangement  under  the  said  section  for 
mutual  protection  of  trade  marks,  shall  be  entitled  to  registra- 
tion of  his  trade  mark  under  this  Ordinance  in  priority  to  other 
applicants,  and  such  registration  shall  take  effect  from  the  same 
date  as  the  date  of  the  application  in  such  foreign  State. 

(2)  Every  application  for  the  registration  of  a  trade  mark 
under  this  section  shall  be  made  within  four  months  from  the 
date  of  the  application  for  protection  in  such  foreign  State. 

(3)  Nothing  in  this  section  contained  shall  entitle  the  pro- 
prietor of  the  trade  mark  to  recover  damages  for  infringements 
happening  prior  to  the  date  of  the  actual  registration  of  his 
trade  mark  in  Nigeria. 

(4)  The  use  in  Nigeria  during  the  period  aforesaid  of  the 
trade  mark  shall  not  invalidate  the  registration  thereof. 

(5)  The  application  for  the  registration  of  a  trade  mark 
under  this  section  shall  be  made  in  the  same  manner  as  an  ordi- 
nary application  under  this  Ordinance :  Provided  that  any  trade 
mark  the  registration  of  which  has  been  duly  applied  for  in  the 
country  of  origin  may  be  registered  under  this  Ordinance. 

(6)  The  provisions  of  this  section  shall  apply  only  in  the 
case  of  those  foreign  States  with  respect  to  which  His  Majesty 
shall  from  time  to  time  by  Order  in  Council  declare  the  pro- 
visions of  the  aforesaid  Section  ninety-one  of  the  Patents  and 
Designs  Act,  1907,  to  be  applicable,  and  so  long  only  in  the  case 
of  each  State  as  such  Order  continues  in  force  with  respect  to 
that  State. 

Intercolonial  Arrangements 

67.  (1)  Whenever  it  appears  to  the  Governor  in  Council 
that  the  legislature  of  any  British  Possession  or  Protectorate 
has  made  satisfactory  provision  for  the  protection  in  such  Pos- 
session or  Protectorate  of  trade  marks  registered  in  Nigeria, 
the  Governor  in  Council  may  by  Order  apply  all  or  any  of  the 
provisions  of  the  last  preceding  section  of  this  Ordinance,  with 
such  variations  or  additions  as  may  seem  fit,  to  trade  marks 
registered  in  such  British  Possession  or  Protectorate. 

(2)  An  Order  in  Council  under  this  section  shall,  from  a 
date  to  be  mentioned  in  the  Order,  take  effect  as  if  its  provisions 
had  been  contained  in  this  Ordinance,  but  the  Governor  in  Coun- 
cil may  revoke  such  Order. 

GENERAL 
Infants,  Lunatics,  Etc. 

68.  If  any  person  is,  by  reason  of  infancy,  lunacy  or  other 
inability,  incapable  of  making  any  affidavit  or  doing  anything 


694  NIGERIA 

required  or  permitted  by  this  Ordinance  or  by  any  rules  made 
under  the  authority  of  this  Ordinance,  then  the  guardian  of  such 
incapable  person,  or  if  there  be  none,  any  person  appointed  by 
any  Court  possessing  jurisdiction  in  respect  of  the  property 
of  incapable  persons,  upon  the  petition  of  any  person  on  behalf 
of  such  incapable  person,  or  any  other  person  interested  in  the 
making  of  such  affidavit  or  doing  such  thing,  may  make  such 
affidavit,  or  an  affidavit  as  nearly  corresponding  thereto  as  cir- 
cumstances may  permit,  and  do  such  thing  in  the  name  and  on 
behalf  of  such  incapable  person,  and  all  acts  done  by  such  sub- 
stitute shall,  for  the  purposes  of  this  Ordinance,  be  as  effectual 
as  if  done  by  the  person  for  which  he  is  substituted. 

REPEAL 

69.  The  Trade  Marks  Ordinance,  1910,  and  the  Trade 
Marks  Ordinance,  1910  (Amendment  of)  Ordinance,  1912,  are 
hereby  repealed. 


NORWAY 

LAW  OF  JULY  2, 1910 

I.  REGISTRATION  OF  TRADE  MARKS 
a)  Preliminary  elements  and  attributes  of  the  Mark 

SECTION  1.  Whoever  is  engaged  in  manufacture  or  trade, 
agriculture,  mining,  commerce  or  another  enterprise,  may  by 
registration  in  accordance  with  the  provisions  of  this  law  ac- 
quire the  sole  right  to  the  use  of  particular  trade  marks  in  his 
industry. 

The  trade  mark  shall  be  applied  for  at  the  Office  for  the 
Protection  of  Industrial  Property,  for  stated  goods  or  classes 
of  goods.  See  Sees.  11,  (1)  c,  and  33. 

SEC.  2.  The  trade  mark  must  be  adapted  to  distinguish  in 
general  commerce  the  goods  of  the  applicant  from  the  goods  of 
others. 

There  may  not  exclusively  constitute  a  mark  the  method  of 
manufacture,  the  place  and  time  of  manufacture,  or  the  kind, 
destination,  contents  or  composition,  price,  number  or  weight 
of  the  goods. 

It  must  not : 

(a)  Offend  against  the  laws  or  be  liable  to  give  rise  to 
scandal, 

(b)  Contain  anything  that  obviously  does  not  correspond 
with  actual  conditions  and  is  liable  to  cause  deception, 

(c)  Contain  public  coats-of-arms  or  marks. 

SEC.  3.  A  trade  mark  may  not  be  registered  if  the  same 
mark  already  enjoys  protection  pursuant  to  valid  registration 
for  goods  of  the  same  or  similar  nature.  By  the  expression 
"the  same  mark"  there  is  for  the  purposes  of  this  law  to  be  also 
understood  a  mark  that  is  so  similar  to  another  that  it  is  liable 
to  produce  confusion  in  general  commerce. 

If  the  protection  of  a  registered  mark  has  expired,  the  reg- 
istration of  the  same  mark  in  favor  of  another  for  goods  of  the 
same  or  a  similar  nature  may  only  be  applied  for  after  the  lapse 
of  two  years. 

SEC.  4.  A  trade  mark  will  be  registered  for  the  term  of 
10  years  counting  from  the  day  of  application. 

The  registration  may  be  renewed  for  10  years  at  a  time, 
counting  from  the  lapse  of  the  expiring  term. 

SEC.  5.  Protection  obtained  through  registration  shall  be 
to  the  effect  that  the  proprietor  of  the  mark  is  alone  entitled 


696  NORWAY 

to  apply  the  mark  upon  goods  offered  or  intended  to  be  offered 
for  sale,  or  upon  their  packing  (emballage)  or  to  notices,  prints, 
price  lists,  business  letters,  recommendations,  bills  and  the  like, 
or  to  offer  for  sale  or  to  sell  goods  so  marked. 

By  this  protection  no  one  shall  be  prevented  from  using  his 
name  or  his  signature  as  a  mark  for  his  goods. 

SEC.  6.  The  right  to  the  trade  mark  protected  by  regis- 
tration may  only  be  transferred  in  connection  with  the  business 
in  which  the  trade  mark  is  used. 

With  the  transfer  of  the  business  the  right  to  the  trade  mark 
shall  be  vested  in  the  new  owner,  if  not  otherwise  stipulated. 

SEC.  7.  Whoever  does  not  reside  in  Norway  may  only 
apply  for  the  registration  of  a  trade  mark  and  enforce  the  rights 
derived  from  the  registration  if  he  has  appointed  a  resident 
attorney  made  known  to  the  Office  for  the  Protection  of  Indus- 
trial Property,  who  shall  represent  him  in  all  matters  relating 
to  the  trade  mark,  and  who  may,  in  civil  cases,  be  summoned 
by  the  court  in  his  name. 

SEC.  8.  The  protection  shall  cease  if  the  renewal  of  pro- 
tection is  not  applied  for  within  the  course  of  the  expiring  term 
of  protection  (see,  however,  Sec.  12,  paragraph  2),  or  if  the 
proprietor  of  the  mark  shall  petition  for  the  annulment  of  the 
mark. 

SEC.  9.  The  registration  may  by  decree  be  declared  invalid 
in  case  the  conditions  requisite  for  the  protection  of  marks 
according  to  the  provisions  of  Sees.  1,  2  and  3  are  not  observed. 
See  also  Sec.  30  (2b)  and  Sec.  31. 

Complaints  may  be  lodged  by  any  one  who  has  an  interest 
therein,  provided  it  is  a  question  of  cases  under  Sees.  1  and  2; 
also  by  the  Office  for  the  Protection  of  Industrial  Property. 

If  the  proprietor  of  the  mark  and  he  who  disputes  the  valid- 
ity of  the  registration  agree  thereto,  the  question  of  validity 
may  be  finally  decided  by  the  Second  Division  of  the  Office  for 
the  Protection  of  Industrial  Property.  For  this  a  fee  of  30 
kronen  shall  be  payable. 

The  Second  Division  of  the  Office  may,  moreover,  if  it  finds 
that  the  prescribed  conditions  for  the  protection  were  not  or  are 
not  present,  by  decree  declare  the  registration  invalid  if  the 
proprietor  of  the  mark  makes  no  objection  thereto.  Such  objec- 
tion must  be  made  at  the  latest  within  3  months  after  the  Office 
has  furnished  him  with  notice  of  the  declaration  of  invalidity 
together  with  the  grounds  therefor. 

SEC.  10.  A  registered  trade  mark  may  by  decree  be  taken 
away  from  the  proprietor  of  the  mark : 

(a)  If  the  same  mark,  prior  to  the  application  for  registra- 


NORWAY  697 

tion  was  known  in  corresponding  business  circles  as  the  special 
designation  of  another  enterprise  for  the  same  or  similar  goods 
(see  Sec.  23), 

(b)  In  case  the  owner  of  the  mark  was  at  the  time  of  the 
application  aware  that  the  same  mark  had  been  employed  by 
another  for  the  same  or  similar  goods  before  it  had  been  applied 
for  or  used  by  him. 

Revocation  proceeding  must  be  instituted  by  the  rightful 
owner  of  the  mark  within  two  years  after  the  date  of  the  regis- 
tration of  the  mark. 

If  the  trade  mark  is  taken  away  from  the  registered  owner, 
the  rightful  owner  shall  be  entitled  to  cause  it  to  be  registered 
for  himself  without  regard  to  the  concluding  provision  of  Sec.  3. 

b) Application  for  registration  of  marks  and  decision 

relative  thereto 
SEC.  11.     The  application  shall  contain: 

(1)  A  petition  addressed  to  the  Office  for  the  Protection  of 
Industrial  Property  stating: 

(a)  The  name  or  style  and  the  domicile  of  the  applicant; 

(b)  The  business  in  which  the  mark  is  to  be  used; 

(c)  The  goods  or  class  of  goods  for  which  the  registration 
is  desired; 

(2)  A  representation  of  the  mark  at  the  most  6.5  cm.  in 
height  and  breadth,  if  it  is  a  word  mark,  and  10  cm.  for  other 
marks,  and  if  necessary  a  description  of  the  mark; 

(3)  In  case  an  attorney  is  appointed,  a  power  of  attorney 
accepted  by  him; 

(4)  Thirty  kronen  as  a  fee  for  the  registration  and  publica- 
tion.   If  the  mark  is  to  be  registered  in  more  than  one  class,  10 
kronen  must  be  paid  for  each  additional  class. 

For  each  class  for  which  the  applicant  applies  for  protec- 
tion but  does  not  obtain  it,  10  kronen  will  be  returned  to  him. 

Before  registration  may  take  place  the  applicant  must  also 
present  an  electrotype  and  10  impressions  of  the  mark  of  the 
size  mentioned  in  (2). 

SBC.  12.  The  application  for  renewal  must  contain  every- 
thing which  is  prescribed  in  the  preceding  paragraph  under  (1) 
and  (2).  A  fee  of  10  kronen  is  to  be  paid  before  the  expiration 
of  the  term  of  protection  for  each  class  in  which  renewal  is 
desired. 

Upon  payment  of  an  additional  fee  of  a  total  of  5  kronen 
the  application  for  renewal  may  be  filed  within  three  months 
after  the  expiration  of  the  term  of  protection. 

If  the  application  for  renewal  is  not  filed  before  the  expira- 
tion of  the  term  of  protection,  a  warning  shall  be  sent  to  the 


698  NORWAY 

proprietor  of  the  mark.  In  case  this  is  omitted  legal  conse- 
quences do  not  follow. 

SEC.  13.  An  incomplete  application  shall  be  considered  as 
completed  in  accordance  with  the  provisions  if  the  defect  is 
removed  in  due  time  (Sec.  15). 

However,  the  application  shall  be  considered  as  not  effected 
so  long  as  a  representation  of  the  mark  is  not  filed. 

SEC.  14.  The  application  shall  be  subject  to  the  procedure 
of  the  Office  for  the  Protection  of  Industrial  Property  (First 
Division)  in  accordance  with  the  provisions  in  force  in  respect 
thereto. 

SEC.  15.  If  the  application  does  not  fulfill  the  prescribed 
requirements,  or  if  the  conditions  for  protection  according  to 
Sees.  1,  2  and  3  are  not  considered  to  be  present,  the  applicant 
will  be  advised  thereof  with  a  statement  of  the  reasons,  and 
with  a  summons  to  present  himself  within  a  determined  period 
and,  if  necessary,  to  remove  the  stated  defects. 

SEC.  16.  After  the  term  has  expired  the  Office  shall  decide 
with  regard  to  the  registration  of  the  mark. 

SEC.  17.  The  applicant  may  lodge  an  appeal  with  the  Office 
(Second  Division)  from  a  decision  to  reject. 

The  appeal  must  be  lodged  within  2  months  after  delivery 
of  the  official  decision. 

A  fee  of  20  kronen  shall  be  payable  for  the  appeal.  If  this 
is  not  paid  before  the  expiration  of  the  term,  the  appeal  shall 
be  considered  as  not  having  been  effected. 

SEC.  18.  The  decision  of  the  Second  Division  of  the  Office 
refusing  the  registration  shall  be  final. 

SEC.  19.  If  the  registration  is  approved,  the  Office  shall 
order  the  registration  of  the  mark  in  the  Trade  Mark  Register, 
effect  publication  in  regard  to  the  registration  in  the  Official 
Journal  and  in  the  journal  mentioned  in  the  Law  relating  to  the 
Office  for  the  Protection  of  Industrial  Property,  and  issue  a 
certificate  of  registration  for  the  applicant. 

In  the  case  of  renewal  of  registration,  publication  shall  be 
effected  and  the  certificate  issued  in  similar  manner. 

c)  Registration  of  Marks 

SEC.  20.  The  Trade  Mark  Register  shall  show  the  date  of 
the  application,  its  subject,  and  the  name  and  domicile  of  the 
applicant,  and,  if  necessary,  of  his  attorney. 

If  the  protection  for  a  mark  ceases,  or  if  the  registration 
is  deemed  or  declared  invalid,  or  withdrawn  from  the  owner, 
this  shall  be  noted  in  the  Register  and  published. 

Changes  in  respect  to  the  personality  of  the  owner  of  the 


NORWAY  699 

mark  or  his  attorney  shall  also  be  noted  and  published  if  due 
notice  thereof  is  given  the  Office. 

So  long  as  such  changes  are  not  applied  for,  complaints 
relative  to  the  mark  may  be  lodged  against  the  owner  or  his 
attorney  noted  in  the  Register  and  communications  will  be 
directed  to  them  by  the  Office. 

SEC.  21.  Anyone  shall  be  entitled  to  have  the  Registrar 
and  the  application,  with  the  documents  attached  thereto,  rela- 
tive to  a  registered  trade  mark  laid  before  him  for  inspection, 
and  to  receive  a  certified  copy  thereof.  However,  the  reproduc- 
tion of  the  registered  trade  mark  itself  may  not  be  demanded. 

II.  FALSIFICATION  OF  MARKS;  ILLEGAL  DESIGNATIONS  OF 
COMMERCIAL  ESTABLISHMENTS 

SEC.  22.  Whoever  unlawfully  applies  to  goods  offered  or 
intended  to  be  offered  for  sale,  their  wrappers  or  the  various 
objects  mentioned  in  Sec.  5,  (a)  the  mark  of  another  protected 
by  registration  for  the  same  or  a  similar  kind  of  goods,  (b) 
the  name  or  the  style  of  another,  (c)  anything  which  in  this  con- 
nection is  apt  to  cause  confusion  in  general  business  circles,  or 
who  unlawfully  offers  for  sale  or  sells  goods  so  marked  may  be 
enjoined  by  the  injured  party. 

If  he  has  acted  with  knowledge,  he  will  be  punished  with  a 
fine  or  imprisonment  not  to  exceed  three  months.  In  this  case, 
as  also  if  he  has  acted  negligently,  he  shall  be  obliged  to  make 
amends  for  the  damages.  Public  prosecution  shall  take  place 
only  upon  demand  of  the  injured  party. 

SEC.  23.  Goods  held  or  intended  for  sale,  the  wrapping 
of  same  or  the  various  articles  mentioned  in  Sec.  5  may  not 
illegally  be  provided  with  a  mark  or  a  semblance  that  in  the 
respective  business  circles  is  known  as  the  special  designation 
of  another  enterprise  for  goods  of  the  same  or  a  similar  nature, 
nor  may  goods  so  marked  or  gotten  up  be  held  for  sale  or  sold, 
insofar  as  there  is  danger  thereby  of  creating  confusion  in 
regard  to  the  establishment  in  which  the  goods  originate. 

Whoever  acts  in  contravention  of  this  may  be  enjoined  by 
the  injured  party. 

If  he  has  acted  knowingly,  he  will  be  punished  with  a  fine, 
and  he  shall  be  bound  to  make  amends  for  the  damage.  Public 
prosecution  shall  only  take  place  upon  the  demand  of  the  in- 
jured party. 

SEC.  24.  Whoever  applies  to  goods  held  or  intended  to  be 
held  for  sale,  to  their  wrapping  or  to  the  various  objects  men- 
tioned in  Sec.  5,  his  name  or  his  firm  in  such  manner  that  the 
designation  is  apt  to  cause  confusion  with  a  designation  for 
goods  which  is  rightfully  employed  by  another  for  goods  of 


700  NORWAY 

the  same  or  a  similar  nature,  or  who  holds  for  sale  or  sells 
goods  so  marked,  may  be  enjoined  by  the  injured  party. 

If  he  intended  to  create  such  confusion  he  shall  be  punished 
by  a  fine,  and  shall  be  obliged  to  make  compensation  for  the 
damage.  Public  prosecution  shall  only  take  place  upon  the  de- 
mand of  the  injured  party. 

SEC.  25.  Goods  held  or  intended  to  be  held  for  sale,  the 
wrapping  of  same  or  the  various  objects  mentioned  in  Sec.  5, 
may  not  be  provided  with  an  incorrect  statement  of  the  place 
of  origin  of  the  goods  or  a  statement  which  in  this  connection 
is  adapted  to  create  confusion,  nor  may  goods  so  marked  be 
held  for  sale  or  sold.  Whoever  acts  in  contravention  of  this 
may  by  decree  be  forbidden  from  making  use  of  the  statement 
in  holding  the  goods  for  sale. 

If  he  has  knowingly  made  use  of  the  incorrect  statement 
he  may  be  obliged  to  compensate  for  the  damages. 

If  he  intended  to  deceive  in  regard  to  the  nature,  the  con- 
tents, the  construction  or  value  of  the  goods  he  shall  be  punished 
with  a  fine. 

Statements  of  the  place  that  are  intended  according  to  com- 
mercial usage  to  be  only  a  statement  of  the  nature  of  the  goods, 
but  not  their  origin,  shall  not  fall  under  the  provisions  of  this 
paragraph. 

The  King  may,  however,  pursuant  to  conventions  with 
foreign  States,  decide  that  the  importation  of  such  goods  as 
bear  statements  such  as  mentioned  in  the  preceding  paragraph, 
shall  only  be  allowed  if  the  goods  are  accompanied  by  sufficient 
declarations  in  respect  to  their  genuineness  and  their  origin  in 
the  country  or  the  portion  of  the  country  in  question.  In  like 
manner  the  King  may  forbid  the  holding  for  sale  and  the  selling 
of  goods  in  the  Kingdom  bearing  statements  such  as  mentioned, 
in  case  the  goods  are  not  genuine  and  do  not  originate  in  the 
country  or  the  part  of  the  country  in  question. 

Offences  against  prohibitions  issued  in  accordance  with  the 
preceding  paragraph  shall  be  punished  by  a  fine. 

SEC.  26.  Whoever  shall  give  to  his  business  or  his  enter- 
prise a  name  that  is  apt  to  cause  confusion  with  a  name  that 
another  has  already  rightfully  employed  for  his  business  or  his 
enterprise  of  the  same  or  a  similar  nature,  may  be  enjoined  by 
the  injured  party. 

In  case  such  confusion  was  intended,  he  shall  be  punished 
by  a  fine  and  obliged  to  compensate  for  the  damages.  Public 
prosecution  shall  take  place  only  upon  demand  of  the  injured 
party. 

SEC.  27.    Whoever  has  unlawfully  made  use  of  a  designa- 


NORWAY  701 

tion  for  goods  or  a  business  shall,  upon  petition  of  the  injured 
party,  be  obliged  to  alter  the  designation  or  to  remove  it.  If 
this  cannot  be  done,  the  articles  in  question  may  be  confiscated. 

The  confiscated  articles  may,  upon  agreement  between  the 
defendant  and  the  injured  party,  be  transferred  to  the  latter  in 
settlement  of  the  compensation  due  him  for  damages. 

SEC.  28.  Complaints  under  Sec.  9  of  this  law  shall  be 
within  the  jurisdiction  of  the  Kristiania  Byret.  The  term  for 
summons  shall  be  four  weeks,  without  regard  to  the  domicile 
of  the  defendant.  The  Office  for  the  Protection  of  Industrial 
Property  shall  receive  notice  of  the  lodging  of  complaints 
through  its  President. 

SEC.  29.  If  the  party  accused  of  infringement  of  a  regis- 
tered trade  mark  bases  his  claim  to  acquittal  upon  the  fact  that 
the  registration  is  invalid,  the  court  hearing  the  case  must, 
upon  demand,  grant  him  the  necessary  postponement  to  obtain 
a  decision  in  regard  to  the  invalidity  of  the  registration. 
III.  MISCELLANEOUS  PROVISIONS 

SEC.  30.  Only  those  that  own  a  business  within  the  King- 
dom in  the  sense  of  Sec.  1  shall  have  a  claim  to  protection  under 
this  law. 

The  King  may,  however,  upon  the  condition  of  reciprocity, 
conclude  agreements  with  foreign  States  whereby  this  protec- 
tion will  also  be  granted  to  those  who  own  such  a  business  out- 
side of  the  Kingdom. 

In  that  case,  with  respect  to  trade  marks  that  are  regis- 
tered, the  following  shall  be  effective: 

1.  The  application  must  be  made  in  the  Kingdom  in  pre- 
scribed manner,  and  the  application,  in  order  to  be  of  effect, 
must  be  accompanied  by  a  certificate  that  the  mark  was  applied 
for  in  prescribed  manner  in  the  foreign  State.    The  trade  mark 
will  not  be  protected  under  broader  conditions  nor  for  a  longer 
time  than  in  the  foreign  State. 

2.  Upon  the  condition  of  reciprocity  for  Norwegian  trade 
marks,  it  may  be  established: 

(a)  That  the  mark  shall  be  registered  and  protected  in  this 
country  just  as  it  is  duly  registered  in  the  foreign  State,  pro- 
vided that  it  does  not  offend  against  morals  or  public  order ;  and 

(b)  That  he,  who  has  in  prescribed  manner  applied  for 
the  registration  of  a  mark  in  the  foreign  States  in  question, 
shall  be  entitled  to  make  application  for  it  here  in  the  Kingdom 
before  the  expiry  of  a  determined  period  after  the  first  applica- 
tion effected  in  a  State  adhering  to  the  agreement,  without  in- 
tervening circumstances  preventing  the  effectiveness  of  the  said 
application. 


702  NORWAY 

SEC.  31.  Whoever,  at  a  national  or  international  exposi- 
tion in  the  country,  has  exhibited  goods  which  are  provided  with 
a  trade  mark,  is  entitled  to  make  application  for  registration 
of  this  mark  within  six  months  after  the  opening  of  the  exposi- 
tion without  the  effectiveness  of  the  application  being  prevented 
by  circumstances  that  shall  have  occurred  after  the  goods  pro- 
vided with  the  mark  were  placed  for  inspection  in  the  exposition 
room. 

Conditional  upon  reciprocity,  the  King  may  conclude  agree- 
ments with  foreign  States  whereby  a  similar  provision  relative 
to  international  expositions  in  those  States  may  be  put  into 
effect. 

SBC.  32.  A  fee  to  be  determined  by  the  King  is  to  be  paid 
for  inscription  in  the  Register  of  Marks  under  the  provision  in 
Sec.  20,  3,  and  for  certified  abstracts  and  copies. 

SEC.  33.  More  detailed  provisions  which,  relative  to  the 
regulation  of  the  classes  of  goods  and  otherwise,  are  necessary 
for  the  execution  of  this  law,  will  be  issued  by  the  King. 

SEC.  34.  This  law  shall  become  of  effect  on  January  1, 
1911.  From  that  time  on  the  laws  of  May  26,  1884,  and  May  31, 
1900,  shall  stand  repealed. 

However,  a  trade  mark  that  was  registered  before  the  entry 
into  force  of  this  law  may  not  be  declared  invalid  or  withdrawn 
from  the  proprietor  provided  it  meets  the  requirements  of  the 
former  law. 

A  registered  trade  mark  that  is  valid,  according  to  the  for- 
mer law,  may  be  renewed  without  regard  to  the  provisions  of 
this  law  relative  to  the  validity  of  marks. 


PALESTINE 

ORDINANCE  OF  DECEMBER  8, 1921 

1.  In  this  Ordinance  the  term  "Trade  Mark"  shall  mean 
a  mark  used  upon  or  in  connection  with  goods  for  the  purpose 
of  indicating  that  they  are  the  goods  of  the  proprietor  of  such 
trade  mark  by  virtue  of  manufacture,  selection,  certification, 
dealing  with  or  offering  for  sale. 

2.  There  shall  be  kept  for  the  purposes  of  this  Ordinance, 
a  book  called  the  Register  of  Trade  Marks  with  the  names  and 
addresses  of  their  proprietors,  notifications  of  assignment,  and 
transmissions,    disclaimers,    conditions,    limitations    and    such 
other  matters  relating  to  the  trade  marks  as  may  from  time  to 
time  be  prescribed.     The  Register  shall  be  kept  at  the  Law 
Courts,  Jerusalem  or  at  such  other  place  as  may  be  appointed 
by  the  High  Commissioner  by  Notice  published  in  the  Official 
Gazette.    The  Register  shall  be  under  control  and  management 
of  a  Registrar  appointed  by  the  High  Commissioner. 

3.  The  Register  kept  under  this  Ordinance  shall  at  all 
convenient  times  be  open  to  inspection  by  the  public  subject  to 
such  regulations  as  may  be  prescribed,  and  certified  copies  of 
any  entry  in  such  Register  shall  be  given  to  any  persons  requir- 
ing the  same  on  payment  of  the  prescribed  fee. 

4.  A  person  desiring  to  have  the  exclusive  use  of  a  trade 
mark  in  order  to  distinguish  goods  of  his  own  production, 
manufacture,  working,  selection,  certification  or  which  he  deals 
with  or  offers  for  sale  may  apply  for  registration  in  accordance 
with  the  provisions  of  this  Ordinance. 

Trade  marks  capable  of  registration  must  consist  of  char- 
acters, devices  or  marks  or  combinations  thereof  which  have  a 
distinctive  character. 

Trade  marks  may  be  registered  with  limitations  as  to 
colours  to  be  used  thereon. 

A  Trade  Mark  must  be  registered  in  respect  of  particular 
goods  or  classes  of  goods. 

5.  The  following  are  not  capable  of  registration  as  trade 
marks : 

(1)  Public  armorial  bearings,  crests,  insignia  or  decora- 
tions of  Palestine  or  of  the  Mandatory  States  or  Foreign  States 
or  nations  unless  authorised  by  the  competent  authorities; 

(2)  Official  Hall  Marks  or  signs  indicating  an  official  war- 
ranty;  unless  put  forward   or  authorised  by  the  competent 
authority  owning  or  controlling  the  mark; 


704  PALESTINE 

(3)  Marks  which  are  identical  with  or  similar  to  the  Na- 
tional Flag,  the  Military  or  Naval  flags  of  Palestine  or  com- 
mendatory medals  or  badges,  or  national  military  or  naval 
flags  of  the  Mandatory  States  or  of  Foreign  Countries ; 

(4)  Marks  which  are  or  may  be  injurious  to  public  order 
or  morality  or  which  are  calculated  to  deceive  the  public;  or 
marks  which  encourage  unfair  trade  competition,  or  contain 
false  indications  of  origin; 

(5)  Marks  consisting  of  figures,  letters  or  words  which  are 
in  common  use  in  trade  to  distinguish  or  describe  goods  or 
classes  of  goods  or  which  are  directly  descriptive  of  their  char- 
acter and  quality;  words  whose  ordinary  signification  is  geo- 
graphical ; 

(6)  Marks  which  are  identical  with  or  similar  to  the  sign 
of  a  Red  Cross  or  Red  Crescent  on  a  white  ground  or  the  desig- 
nation or  characters  of  the  "Red  Cross'*  or  the  "Geneva 
Cross"; 

(7)  Marks  identical  with  or  similar  to  emblems  of  exclu- 
sively religious  significance ; 

(8)  Marks  which  are  or  contain  the  portrait,  name  or  the 
trade  name  of  a  person,  or  the  name  of  a  body  corporate  or  of 
an  association,  unless  the  consent  of  the  person  or  persons  con- 
cerned has  been  obtained ; 

(9)  A  mark  identical  with  one  belonging  to  a  different  pro- 
prietor which  is  already  on  the  register  in  respect  of  such  goods 
or  description  of  goods,  or  so  nearly  resembling  such  trade 
mark  as  to  be  calculated  to  deceive;  provided  nevertheless  that 
this  provision  shall  not  apply  to  an  application  made  within 
one  year  from  the  date  at  which  this  Ordinance  comes  into  force 
for  the  registration  of  any  trade  mark  registered  in  Turkey 
prior  to  the  llth  day  of  November,  1918,  in  accordance  with 
the  provisions  of  the  Ottoman  Law  then  in  force  and  which  at 
that  date  was  still  so  registered. 

6.  The  Registrar  shall  equally  have  power  to  register 
under  this  Ordinance  trade  marks  belonging  to  associations 
the  existence  of  which  is  not  contrary  to  the  law  of  their  coun- 
try of  origin,  even  if  such  associations  do  not  possess  an  indus- 
trial or  commercial  establishment. 

Trade  marks  registered  under  the  provisions  of  the  Public 
Notice  No.  136  of  the  30th  day  of  September,  1919,  shall  from 
the  date  on  which  this  Ordinance  comes  into  force,  be  deemed 
to  be  registered  only  under  this  Ordinance  and  the  date  of 
registration  of  such  marks  shall  for  the  purpose  of  this  Ordi- 
nance be  deemed  to  be  the  date  of  registration  under  the  same 
Public  Notice. 


PALESTINE  705 

7.  (1)  Any  person  claiming  to  be  the  proprietor  of  a  trade 
mark  who  is  desirous  of  registering  the  same  must  apply  in 
writing  to  the  Registrar  in  the  prescribed  manner. 

(2)  The  Registrar  may  refuse  such  application,  or  may 
accept  it  absolutely  or  subject  to  conditions,  amendments,  or 
modifications,  or  to  such  limitations,  if  any,  as  to  mode  or  place 
of  user  or  otherwise  as  he  may  think  right  to  impose,  subject 
always  to  the  provisions  of  this  Ordinance. 

Any  refusal  by  the  Registrar  to  register  a  mark  shall  be 
subject  to  appeal  to  the  Court  of  Appeal. 

8.  When  an  application  for  registration  of  a  trade  mark 
has  been  accepted,  whether  absolutely  or  subject  to  conditions 
and  limitations,  the  Registrar  shall,  as  soon  as  may  be  after 
such  acceptance,  cause  the  application  as  accepted  to  be  adver- 
tised in  the  prescribed  manner.    Such  advertisement  shall  set 
forth  all  conditions  and  limitations  subject  to  which  the  appli- 
cation has  been  accepted. 

9.  (1)  Any  person  may,  within  six  months  from  the  date 
of  an  application  for  the  registration  of  a  trade  mark,  file  with 
the  Chief  Clerk  of  the  Court  of  Appeal  a  notice  of  opposition 
to  such  registration. 

Such  notice  shall  be  given  in  writing  in  the  prescribed 
manner  and  shall  include  a  statement  of  the  grounds  of  oppo- 
sition. 

(2)  Copies  of  the  notice  of  opposition  shall  be  lodged  with 
the  Registrar  and  served  upon  the  applicant  for  registration. 

(3)  The  filing  and  service  of  the  notice  of  opposition  shall 
constitute  the  commencement  of  proceedings  before  the  Court 
of  Appeal  for  the  determination  of  the  validity  of  the  opposi- 
tion.   The  Court  may  reject  or  accept  the  opposition  absolutely 
or  may  direct  that  registration  shall  only  be  allowed  subject 
to  such  conditions,  amendments,  modifications,  or  limitations  as 
to  mode  or  place  of  user  as  under  the  circumstances  it  may 
think  fit. 

(4)  A  certified  copy  of  the  judgment  shall  be  lodged  with 
the  Registrar  by  the  successful  party. 

10.  (i)  If  the  time  for  opposition  has  elapsed  without  any 
person  opposing  or  after  an  opposition  has  been  decided  in 
favour  of  the  applicant  the  Registrar  shall  at  the  instance  of 
the  applicant  register  the  mark.     The  mark  when  registered 
shall  be  registered  as  on  the  date  of  the  application  and  such 
date  shall  be  given  for  the  purposes  of  this  Ordinance  to  be 
the  date  of  Registration. 

(ii)  On  the  registration  of  a  Trade  Mark  the  Registrar 
shall  issue  to  the  applicant  a  certificate  in  the  prescribed  form 


706  PALESTINE 

of  the  registration  of  such  trade  mark,  under  the  hand  of  the 
Registrar. 

11.  Where  registration  of  a  trade  mark  is  not  completed 
within  twelve  months  from  the  date  of  the  application  by  reason 
of  default  on  the  part  of  the  applicant  the  Registrar  may,  after 
giving  notice  of  the  non-completion  to  the  applicant  in  writing 
in  the  prescribed  manner,  treat  the  application  as  abandoned 
unless  it  is  completed  within  the  time  specified  in  that  behalf 
in  such  notice. 

12.  Where  each  of  several  persons  claims  to  be  proprietor 
of  the  same  trade  mark,  or  of  nearly  identical  trade  marks  in 
respect  of  the  same  goods  or  description  of  goods,  and  to  be 
registered  as  such  proprietor  otherwise  than  under  Art.  4  (8), 
the  Registrar  shall  refer  the  issue  to  the  Court  of  Appeal  which 
in  determining  the  rights  of  the  parties  shall  have  regard  to  the 
date  of  the  registration  in  the  country  of  origin,  and  the  priority 
of  user  of  the  mark  in  Palestine. 

13.  A  trade  mark  when  registered  shall  be  assigned  and 
transmitted  only  in  connection  with  the  goodwill  of  the  business 
concerned  in  the  goods  for  which  it  has  been  registered  and  shall 
be  determined  with  that  goodwill. 

14.  The  period  of  duration  of  trade  mark  rights  shall  be 
twenty  years  from  the  date  of  registration,  but  may  be  renewed 
from  time  to  time  in  accordance  with  the  provisions  of  this 
Ordinance. 

15.  The  Registrar  shall,  on  application  made  by  the  regis- 
tered proprietor  of  a  trade  mark  in  the  prescribed  manner 
and  within  the  prescribed  period,  renew  the  registration  of  such 
trade  mark  for  a  period  of  twenty  years  from  the  expiration  of 
the  original  registration  or  of  the  last  renewal  of  registration 
as  the  case  may  be. 

16.  (1)  Application  for  the  cancellation  of  the  registration 
of  a  trade  mark  may  be  made  by  any  person  interested  on  the 
following  grounds : 

(i)  That  the  mark  is  not  entitled  to  registration  within  the 
provision  of  Arts.  4,  5,  6. 

(ii)  That  the  registration  of  the  mark  creates  an  unfair 
competition  in  respect  of  the  applicant's  right  in  Palestine;  or 
has  been  fraudulently  obtained  with  a  knowledge  of  the  ap- 
plicant's rights  to  the  ownership  of  the  mark. 

(iii)  That  there  is  no  bona  fide  user  of  the  trade  mark  in 
connection  with  the  goods  for  which  it  is  registered  and  there 
has  not  been  any  such  user  during  the  preceding  two  years. 

Application  for  cancellation  under  sub-sections  (i)  and  (ii) 
must  be  made  within  five  years  of  the  registration  of  the  mark. 


PALESTINE  707 

(2)  Application  for  cancellation  shall  be  made  to  the  Court 
of  Appeal.  A  certified  copy  of  any  judgment  of  the  Court 
ordering  cancellation  shall  be  lodged  with  the  Registrar  by  the 
person  obtaining  such  judgment. 

17.  (1)  Where  a  person  becomes  entitled  by  assignment, 
transmission  or  other  operation  of  law  to  a  registered  trade 
mark,  he  shall  make  application  to  the  Registrar  to  register  his 
title,  and  the  Registrar  shall,  on  receipt  of  such  application  and 
on  proof  of  title  to  his  satisfaction,  register  him  as  the  pro- 
prietor of  the  trade  mark,  and  shall  cause  an  entry  to  be  made 
in  the  prescribed  manner  on  the  register  of  the  assignment, 
transmission  or  other  instrument  affecting  the  title.    Any  de- 
cision of  the  Registrar  under  this  Article  shall  be  subject  to 
appeal  to  the  Court  of  Appeal. 

(2)  Except  in  cases  of  appeals  under  this  Article,  a  docu- 
ment or  instrument  in  respect  of  which  no  entry  has  been  made 
in  the  register  in  accordance  with  the  provisions  of  the  sub- 
section (1)  aforesaid  shall  not  be  admitted  in  evidence  in  any 
Court  in  proof  of  the  title  to  a  trade  mark  unless  the  Court 
otherwise  directs. 

18.  The  registered  proprietor  of  any  trade  mark  may 
apply  in  the  prescribed  manner  to  the  Registrar  for  leave  to 
add  to  or  alter  such  trade  mark  in  any  manner  not  substantially 
affecting  the  identity  of  the  same,  and  the  Registrar  may  re- 
fuse such  leave  or  may  grant  the  same  in  such  terms  and  sub- 
ject to  such  limitations  as  to  mode  or  place  of  user  as  he  may 
think  fit,  but  any  such  refusal  or  conditional  permission  shall 
be  subject  to  appeal  to  the  Court  of  Appeal. 

If  leave  be  granted,  the  trade  mark  as  altered  shall  be 
advertised  in  the  prescribed  manner. 

19.  Subject  to  any  limitations  and  conditions  entered  upon 
the  register,  the  registration  of  a  person  as  proprietor  of  a 
trade  mark  shall,  if  valid,  give  to  such  person  the  right  to  the 
exclusive  use  of  such  trade  mark  upon  or  in  connection  with 
the  goods  in  respect  of  which  it  is  registered.    Provided  always 
that  where  two  or  more  persons  are  registered  proprietors  of 
the  same  (or  substantially  the  same)  trade  mark  in  respect  of 
the  same  goods,  no  rights  of  exclusive  user  of  such  trade  mark 
shall  (except  so  far  as  their  respective  rights  shall  have  been 
defined  by  the  Registrar)  be  acquired  by  any  one  of  such  per- 
sons as  against  any  other  by  the  registration  thereof,  but  each 
of  such  persons  shall  otherwise  have  the  same  rights  as  if  he 
were  the  sole  registered  proprietor  thereof. 

20.  In  all  legal  proceedings  relating  to  a  registered  trade 
mark  the  fact  that  a  person  is  registered  as  proprietor  of  such 


708  PALESTINE 

trade  mark  shall  be  prima  facie  evidence  of  the  validity  of 
the  original  registration  of  such  trade  mark  and  all  subsequent 
assignments  and  transmissions  of  the  same. 

21.  Subject  to  the  provisions  of  this  Ordinance  the  Regis- 
trar may  with  the  approval  of  the  High  Commissioner  from 
time  to  time  make  such  rules,  prescribe  such  forms,  and  gen- 
erally do  such  things  as  he  may  think  expedient — 

(a)  for  regulating  the  practice  under  this  Ordinance; 

(b)  for  classifying  goods  for  the  purpose  of  registration 
of  trade  marks ; 

(c)  for  making  or  requiring  duplicates  of  trade  marks  and 
other  documents ; 

(d)  for  securing  and  regulating  the  publishing  and  selling 
or  distributing  in  such  manner  as  the  Registrar  thinks  fit,  of 
copies  of  trade  marks  and  other  documents ; 

(e)  generally,  for  regulating  the  business  of  the  office  in 
relation  to  trade  marks  and  all  things  by  this  Ordinance  placed 
under  the  direction  or  control  of  the  Registrar. 

Rules  made  under  this  Article  shall  take  effect  from  the 
date  of  their  publication  in  the  Official  Gazette  and  shall,  whilst 
in  force,  be  of  the  same  effect  as  if  they  were  contained  in  this 
Ordinance. 

22.  There  shall  be  paid  in  respect  of  applications  and 
registrations  and  other  matters  under  this  Ordinance  such  fees 
as  may  be  prescribed  by  the  rules. 

23.  (1)  Any  person  who  represents  a  trade  mark  as  regis- 
tered, which  is  not  so,  shall  be  liable  for  every  offence  to  a  fine 
not  exceeding  £50. 

(2)  A  person  shall  be  deemed,  for  the  purposes  of  this 
enactment,  to  represent  that  a  trade  mark  is  registered,  if  he 
uses  in  connection  with  the  trade  mark  the  word  " registered" 
or  any  words  expressing  or  implying  that  registration  has  been 
obtained  for  the  trade  mark. 

(3)  No  person  shall  be  entitled  to  institute  any  proceed- 
ings to  recover  damages  for  the  infringement  of  a  trade  mark 
not  registered  in  Palestine. 

(4)  In  an  action  for  the  infringement  of  a  trade  mark  the 
Court  trying  the  question  of  infringement  shall  admit  evidence 
of  the  usages  of  the  trade  in  respect  of  the  get-up  of  the  goods 
for  which  the  trade  mark  is  registered  and  of  any  trade  marks 
or  get-up  legitimately  used  in  connection  with  such  goods  by 
other  persons. 

(5)  No  registration  under  this  Ordinance  shall  interfere 
with  any  genuine  use  by  a  person  of  his  own  name  or  place  of 
business,  or  that  of  any  of  his  predecessors  in  business  or  the 


PALESTINE  709 

use  by  any  person  of  any  genuine  description  of  the  character 
or  the  quality  of  his  goods. 

(6)  Nothing  in  this  Ordinance  shall  be  deemed  to  affect 
the  right  to  bring  an  action  against  any  person  for  unfair  com- 
petition in  respect  of  his  trade  or  the  remedies  in  respect  thereof. 

(7)  Any  person  who  with  intent  to  deceive  commits  or 
attempts  to  commit  or  aids  or  abets  any  other  person  in  com- 
mitting any  of  the  following  acts  shall  be  guilty  of  an  offence 
against  this  Ordinance  and  shall  be  liable  upon  conviction  to 
imprisonment  for  a  period  not  exceeding  one  year  and  with  a 
fine  not  exceeding  £100  or  with  one  only  of  these  penalties : 

(a)  makes  use  of  a  trade  mark  registered  under  this  Ordi- 
nance or  of  an  imitation  of  such  trade  mark  upon  the  same 
class  of  goods  as  that  in  respect  of  which  the  mark  is  registered ; 

(b)  sells,  stores  for  the  purposes  of  sale,  or  exposes  for 
sale,  goods  bearing  a  mark  the  use  of  which  is  an  offence  under 
sub-section  (a) ; 

(c)  uses  a  mark  duly  registered  by  another  person  under 
this  Ordinance  for  the  purpose  of  advertising  in  the  public  press 
or  in  any  other  manner,  goods  of  the  same  classification  as  those 
for  which  registration  has  already  been  obtained  by  another 
person; 

(d)  makes,  engraves,  prints,  or  sells,  any  plate,  die,  block 
or  other  representation  of  a  duly  registered  mark  or  any  other 
imitation  thereof  for  the  purpose  of  enabling  any  person  other 
than  the  registered  proprietor  of  such  mark  to  make  use  of 
such  mark  or  an  imitation  thereof  in  connection  with  goods  of 
the  same  classification  as  those  for  which  registration  has  al- 
ready been  obtained  by  another  person; 

(e)  makes,  packs  or  wraps,  sells,  stores  for  the  purpose 
of  sale,  or  exposes  for  sale,  goods  so  got  up,  packed,  wrapped 
or  otherwise  prepared  as  to  lead  intending  purchasers  to  believe 
that  they  are  the  goods  of  another  manufacturer  or  are  of  an 
origin  other  than  their  true  origin. 

For  the  purpose  of  this  sub-section  it  shall  be  immaterial 
whether  the  goods,  the  packing,  wrapping  or  get-up  of  which  is 
imitated  bear  a  duly  registered  trade  mark  or  not; 

(f)  imports  any  goods  bearing  a  mark  which  would  con- 
stitute an  infringement  of  a  duly  registered  mark,  or  imports 
goods  so  got  up,  wrapped,  packed  or  prepared  as  to  enable 
the  goods  to  be  passed  off  as  the  goods  of  another  manufacturer. 

In  all  such  cases  in  lieu  of  or  in  addition  to  penalties  herein- 
before provided,  the  Court  shall  have  power  to  grant  an  injunc- 
tion against  a  continued  repetition  of  any  offence  committed 
under  this  Article. 


710  PALESTINE 

(8)  The  Court  before  which  any  person  charged  under  the 
aforesaid  section  is  brought  may  order  that  all  goods,  wrap- 
ping, packing  and  advertising  material,  and  blocks,  dies  and 
other  apparatus  and  material  for  printing  the  mark  or  packing, 
wrapping,  advertising  or  other  material  in  respect  of  which  the 
offence  is  committed  be  confiscated  or  destroyed. 

24.  If  at  any  time  the  Government  of  Palestine  shall  be- 
come a  party  to  an  international  arrangement  for  the  mutual 
protection  of  trade  marks,  then  any  person  who  has  applied  for 
protection  for  a  trade  mark  in  any  State  which  is  a  party  to 
such  arrangement  shall  be  entitled  to  registration  of  his  trade 
mark  under  this  Ordinance  in  priority  to  other  applicants  and 
the  registration  shall  have  the  same  date  as  the  date  of  regis- 
tration in  such  State: 

Provided  that: 

(a)  the  application  is  made  within  four  months  from  the 
application  for  protection  in  such  State ; 

(b)  nothing  in  this  Article  shall  entitle  the  proprietor  of 
the  trade  mark  to  recover  damages  for  infringement  happening 
prior  to  the  date  on  which  the  trade  mark  is  registered  in 
Palestine. 

The  registration  of  the  trade  mark  shall  not  be  invalidated 
by  reason  of  the  use  of  the  trade  mark  in  Palestine  during  the 
said  period  of  four  months. 

25.  The  application  for  registration  of  a  trade  mark  under 
Art.  24  shall  be  made  in  the  same  manner  as  an  ordinary  appli- 
cation under  this  Ordinance. 

Provided  that  any  trade  mark  the  registration  of  which 
has  been  duly  applied  for  in  the  country  of  origin  may,  if  such 
trade  mark  is  not  contrary  to  public  policy,  be  registered  under 
the  Ordinance. 

26.  The  provisions  of  Arts.  24  and  25  shall  apply  only  to 
the  case  of  such  State  with  respect  to  which  an  Order  in  Council 
by  the  Mandatory  State  declares  them  to  be  applicable. 

27.  (i)  From  the  date  at  which  this  Ordinance  comes  into 
force  the  registration  and  protection  of  trade  marks  in  Pales- 
tine shall  be  governed  by  it  to  the  exclusion  of  any  existing 
Ottoman  Laws. 

(ii)  The  Public  Notice  No.  136  of  30th  September,  1919,  is 
duly  repealed. 

28.  This  Ordinance  shall  come  into  force  on  the  1st  day 
of  January,  1922. 

29.  This  Ordinance  may  be  cited  as  the  Trade  Marks  Ordi- 
nance, 1921. 


PANAMA 

LAW  NO.  24  OF  NOVEMBER  14,  1908* 

ARTICLE  15.  There  shall  be  understood  as  a  mark  of  manu- 
facture any  word,  phrase,  or  sign,  or  combination  of  these  ele- 
ments, employed  for  distinguishing  or  determining  a  special 
product  destined  for  industry  or  for  commerce;  and  as  a  mark 
of  commerce,  a  word,  phrase,  or  sign,  or  combination  of  these 
elements,  used  as  a  distinctive  for  an  article  of  commerce  in- 
tended for  an  individual  or  for  a  commercial  house. 

ART.  16.  Any  Panamanian  or  foreigner,  owner  of  a  mark 
of  manufacture  or  of  commerce,  may  acquire  the  exclusive  right 
to  use  it  within  the  Territory  of  the  Republic  on  fulfillment  of 
the  formalities  of  registration  at  the  respective  Secretariat,  for 
which  there  shall  be  observed  the  following : 

1)  The  petitioner  shall  apply  in  person  or  through  attorney 
at  the  Secretariat,  making  application  for  the  registration  of 
the  mark,  there  being  stated  plainly  the  distinctive  sign  that 
constitutes  it,  the  product  or  article  to  which  it  relates  and  the 
place  at  which  this  latter  is  manufactured. 

2)  The  application  shall  be  drawn  up  on  stamped  paper 
of  the  first  class  and  with  it  there  shall  be  included  a  receipt 
from  the  Treasury  General  of  the  Republic,  in  which  it  shall  be 
shown  that  the  registration  fee — which   shall   be   twenty-five 
balboas  (B.  25.00) — has  been  paid,  and  three  facsimiles  of  the 
mark  or  its  representation  by  means  of  a  drawing  or  engraving. 
Two  of  the  said  facsimiles  shall  bear  an  adhesive  stamp  of  the 
first  class  and  shall  be  signed  on  the  reverse  by  the  party  inter- 
ested, with  annotation  of  the  date  of  the  application. 

PARAGRAPH.  When  it  is  a  matter  of  the  registration  of  marks 
of  manufacture  or  of  commerce  intended  for  articles  of  the 
country,  there  shall  be  paid  only  one-half  of  the  fee  indicated 
in  this  article. 

3)  The  application  shall  be  published  two  consecutive  times 
in  the  official  periodical;  if  ninety  days  shall  have  passed  fol- 
lowing the  first  publication,  the  registration  of  the  mark  shall  be 
effected.    To  the  applicant  there  shall  be  delivered  a  certificate 
of  registration,  which  shall  constitute  the  deed  of  ownership  of 
the  respective  mark.     This  certificate  shall  be  drawn  up  on 
stamped  paper  of  the  first  class  and  shall  be  published  for  two 
consecutive  times  in  the  official  periodical. 

ART.  17.    The  ownership  of  a  mark  of  manufacture  or  of 

*Matter  not  relating  to  trade  marks  is  omitted. 


712  PANAMA 

commerce  shall  be  acquired  for  the  term  of  ten  years ;  however, 
it  may  be  renewed  indefinitely  for  like  terms  if  it  be  correspond- 
ingly solicited  and  there  be  paid  the  renewal  fee,  which  will  be 
twenty  balboas  (B.  20.00). 

PARAGRAPH.  There  shall  be  paid  only  the  half  of  this  sum 
when  it  is  a  question  of  articles  manufactured  within  the 
country. 

ART.  18.  For  the  renewal  of  a  mark  of  manufacture  or  of 
commerce,  it  shall  be  necessary  to  make  application  within  the 
term  of  the  thirty  days  immediately  preceding  and  the  thirty 
days  following  the  date  of  the  expiration  of  the  right  acquired ; 
this  term  having  expired  without  the  renewal  having  been 
applied  for,  the  right  acquired  shall  fall  into  caducity. 

ART.  19.  The  ownership  that  is  acquired  through  the  reg- 
istration of  a  mark  of  manufacture  or  of  commerce  shall  alone 
establish  the  right  of  usage  thereof ;  but,  in  no  case,  the  exclusive 
right  to  the  manufacture  or  sale  of  the  product  or  object. 

ART.  20.  For  each  mark  of  manufacture  or  of  commerce 
that  it  is  desired  to  register,  there  must  be  filed  an  application. 

ART.  21.  There  shall  not  be  permitted  the  registration  of 
a  mark  of  manufacture  or  of  commerce  when  it  is  to  be  used  in 
the  exploitation  of  illicit  articles. 

ART.  22.  It  is  prohibited  to  make  use  in  marks  of  manu- 
facture or  of  commerce  of  the  following: 

1)  Designs,  engravings,  or  vignettes,  contrary  to  morality; 
and 

2)  Marks  identical  or  substantially  similar  to  those  that 
shall  have  been  registered,  when  it  is  intended  to  protect  there- 
with products  or  objects  protected  by  the  latter. 

ART.  23.  If  thirty  days  following  the  expiration  of  the 
period  of  reclamation  have  elapsed  without  the  party  interested 
having  filed  the  papers  or  documents  necessary  for  the  issuance 
of  the  certificate,  the  mark  shall  be  declared  abandoned,  in  which 
case,  and  to  effect  registration,  the  interested  party  shall  file  a 
new  application  and  comply  with  all  the  formalities,  as  well  as 
effect  anew  the  payment  of  the  fiscal  fees. 

ART.  24.  Powers  of  attorney  granted  abroad  for  soliciting 
the  registration  of  a  mark  of  manufacture  or  of  commerce  must 
be  authenticated  by  the  respective  Minister  or  Consular  Agent 
of  the  Republic  at  the  place  at  which  they  are  granted,  or  by 
the  Minister  or  Consular  Agent  of  a  friendly  Nation,  in  case 
Panama  has  not  accredited  such  officials  at  the  place  in  which 
the  principal  resides. 

ART.  25.  A  mark  of  manufacture  that  belongs  to  a  foreign 
individual  or  company,  not  resident  in  the  Republic,  may  not  be 


PANAMA  713 

registered  in  this  country  unless  it  shall  have  been  previously 
registered,  and  regularly,  in  the  country  of  its  origin,  which 
shall  be  evidenced  by  an  authentic  copy  of  the  deed  issued 
abroad,  which  must  be  included  with  the  application. 

ART.  26.  The  individual  or  the  company  that  first  has  made 
use  of  a  mark  of  manufacture  or  of  commerce  is  the  owner  that 
shall  have  the  right  to  acquire  the  ownership  thereof.  In  case 
of  dispute  between  two,  or  more,  holders  of  the  same  mark,  the 
ownership  shall  pertain  to  the  first  possessor,  and,  if  the  period 
of  possession  shall  be  the  same,  to  the  first  that  shall  have 
applied  for  the  registration  at  the  respective  Office.  . 

ART.  27.  When  a  person  shall  make  undue  use  of  a  mark 
of  manufacture  or  of  commerce,  already  legally  registered  by 
another  person  or  company,  and  the  possessor  thereof  shall  give 
notice  of  that  abuse  to  the  respective  Secretariat,  proving  his 
better  right,  the  Executive  Power  shall  impose  upon  the  delin- 
quent party  the  first  time  a  fine  of  fifty  balboas  (B.  50.00)  which 
shall  be  paid  into  the  National  Treasury.  In  case  of  repetition, 
it  shall  impose  upon  him  a  fine  of  one  hundred  balboas  (B. 
100.00)  which  shall  be  paid  also  into  the  National  Treasury,  and 
in  every  case  the  articles  and  products  shall  be  confiscated  and 
placed  at  the  disposal  of  the  owner  of  the  mark. 

ART.  28.  Marks  of  manufacture  may  be  assigned  only  with 
the  establishment  producing  the  objects  that  they  serve  to  dis- 
tinguish. In  consequence,  the  transfer  of  a  mark  shall  imply  in 
itself  the  exploitation  of  products  protected  thereby.  The 
assignment  shall  be  subject  to  no  special  formality,  and  shall  be 
evidenced  in  conformity  with  Common  Law,  but  it  must  be  reg- 
istered in  the  respective  Secretariat,  without  which  requisite  it 
shall  be  without  effect  as  regards  third  parties. 

ART.  29.  The  application  being  published  in  the  official 
periodical,  to  the  end  that  those  believing  themselves  rightfully 
entitled  thereto  may  avail  themselves  opportunely  of  their 
rights,  and  the  opposition  in  writing  having  been  presented  in 
due  time,  the  respective  Secretariat  shall  issue  the  correspond- 
ing Resolution,  without  prejudice  to  appeal  to  the  Judicial 
Power  by  the  person  or  persons  that  may  not  be  satisfied 
therewith. 

ART.  30.  The  registration  of  a  mark  of  manufacture  or  of 
commerce  shall  be  effected  without  previous  examination  with 
reference  to  the  utility  of  the  object  and  of  the  quality  and  prop- 
erties of  the  goods  for  which  it  is  intended,  subject  to  the  sole 
responsibility  of  the  applicant  and  without  prejudice  in  every 
case  to  the  rights  of  third  parties. 


714  PANAMA 

LAW  NO.  47  OF  JANUARY  29,  1911* 

ARTICLE  6.  In  addition  to  the  things  that  must  be  filed  with 
applications  for  the  registration  of  marks  in  accordance  with 
Art.  16,  No.  2,  of  Law  No.  24  of  1908,  there  shall  be  included 
one  other  facsimile  of  the  corresponding  mark  and  a  cliche 
(electrotype)  for  reproducing  the  same. 

ART.  7.  (Transitory}  Applications  for  registration  that 
are  filed  prior  to  the  thirtieth  of  June  of  the  present  year  (1911, 
Ed.)  shall  be  accepted  even  though  they  do  not  come  accom- 
panied by  the  cliche  to  which  the  preceding  article  refers,  pro- 
vided that  they  are  in  compliance  with  the  other  legal  require- 
ments; however,  the  parties  interested  shall  remain  obliged  to 
furnish  the  said  cliche  within  the  term  of  four  months,  as  a 
guarantee  of  which  they  shall  deposit  with  the  Treasury  General 
of  the  Republic  the  sum  of  five  balboas  (B.  5.00). 

ART.  8.  Applications  for  the  registration  of  marks  that 
show  names,  corporate  denominations,  portraits,  or  facsimiles 
of  signatures  that  are  not  those  of  the  persons  that  solicit  regis- 
tration, must  be  filed  with  the  corresponding  authorization  from 
the  owners  thereof  or  their  heirs,  in  which  it  must  be  expressly 
evidenced  that  they  are  authorized  to  use  such  names,  portraits, 
corporate  denominations,  or  facsimiles  of  signatures.  Regis- 
trations shall  be  without  value  that  are  effected  in  contravention 
of  the  provisions  of  this  article. 

ART.  9.  Marks  shall  not  be  registered  that  solely  consist 
in  statements  with  reference  to  the  class,  date,  and  place  of 
manufacture,  or  with  respect  to  the  quality,  purpose,  and  condi- 
tions of  price,  and  quantity  and  weight  of  the  goods. 

ART.  10.  Any  mark  whose  renewal  shall  not  have  been 
solicited  in  opportune  time  (Art.  18  of  Law  No.  24  of  1908)  shall 
be  cancelled ;  however,  during  the  two  following  years,  only  the 
person  in  whose  favor  it  shall  have  been  registered  shall  have 
the  right  to  register  it  anew. 

ART.  11.  Notice  shall  be  given  in  the  official  periodical  with 
reference  to  every  cancellation  of  a  mark,  there  being  inserted 
the  description  of  the  mark  or,  if  this  be  impossible,  it  shall  be 
reproduced 

ART.  12.  Applications  for  registration  shall  contain  a  de- 
tailed description  of  the  mark,  and  they  shall  state — should  such 
be  the  case— whether  all  the  elements  that  it  contains  in  the 
form  in  which  it  appears  constitute  the  mark,  or  whether  the 
party  interested  claims  for  himself  stipulated  elements  inde- 

*  Matter  not  relating  to  trade  marks  is  omitted. 


PANAMA  715 

pendently,  and  the  form  in  which  he  considers  these  as  his  prop- 
erty. Said  description  shall  be  entered  in  the  corresponding 
certificate,  to  which  there  shall  be  pasted,  under  the  seal  of  the 
Office,  a  facsimile  of  the  mark. 

ART.  13.  By  itself,  the  name  of  a  merchant  or  that  of  a 
mercantile  or  industrial  society  shall  constitute  a  property.  With 
respect  to  the  title  or  denomination  of  a  house  that  traffics  or 
trades  at  any  commercial  point  of  the  Republic,  it  is  possible  to 
have  a  like  right,  but  solely  for  the  respective  locality,  through 
registration  in  conformity  with  the  provisions  corresponding  to 
the  registration  of  National  marks. 

ART.  14.  Juridical  persons  shall  have  the  same  rights  as 
individuals  with  respect  to  the  ownership  of  their  names,  and 
shall  be  subject  to  the  same  conditions  as  the  latter. 

ART.  15.  The  exclusive  right  to  the  use  of  a  name  consid- 
ered as  industrial  property  shall  expire  with  the  closing  of  the 
house  or  factory,  or  with  the  cessation  of  the  industry  to  which 
the  right  refers. 

ART.  16.  Usurpation  of  the  right  of  ownership  of  a  mark 
of  manufacture  or  of  commerce  shall  be  punished  with  a  fine  of 
from  twenty-five  to  two  hundred  and  fifty  balboas  (B.  25.00  to 
B.  250.00),  or  with  imprisonment  of  from  one  to  three  months, 
in  addition  to  the  confiscation  of  the  article,  as  provided  for  in 
Art.  24  of  Law  No.  24  of  1908. 

ART.  17.  For  the  undue  use  of  marks  of  manufacture  and 
of  commerce  there  shall  be  responsible  the  manufacturer  that 
applies  the  mark,  as  well  as  the  importer  and  seller.  In  conse- 
quence, the  following  shall  be  liable  for  the  penalties  stipulated : 

1)  Those  that  manufacture  or  counterfeit  in  any  way  a  mark 
of  manufacture  or  of  commerce ; 

2)  Those  that  affix  to  their  own  products  or  articles  of  com- 
merce a  mark  identical  with  or  substantially  similar  to  a  mark 
that  belongs  to  another; 

3)  Those  that  in  any  way  shall  make  use  of  marks  in  which 
there  is  patently  manifested  the  intention  to  imitate,  through 
any  interpretation,  a  mark  registered  in  favor  of  other  persons ; 

4)  Those  that  knowingly  sell,  offer  for  sale,  or  consent  to 
sell  or  place  in  circulation,  articles  with  false  labels  or  designa- 
tions, either  with  respect  to  their  nature,  quality,  quantity, 
number,  weight,  or  measure,  or  as  regards  the  country  of  origin 
or  manufacture,  or  use  the  denominations  "Marca  Registrada" 
or  the  equivalent  initials  ' '  M.R. ' ',  when  the  mark  shall  not  have 
been  registered ; 

6)  Those  that  knowingly  sell  or  offer  for  sale  articles  with 
the  false  indications  to  which  the  preceding  paragraph  refers. 


716  PANAMA 

ABT.  18.    In  cases  of  repetition  the  penalty  shall  be  doubled. 

ART.  19.  To  constitute  infringement  or  usurpation  of 
right,  it  shall  suffice  that  the  false  mark  shall  have  been  affixed 
to  a  single  object. 

ART.  20.  Registered  marks  that  are  affixed  to  articles  dif- 
ferent from  those  designated  in  the  corresponding  certificate  of 
registration  shall  be  reputed  as  not  registered. 

ABT.  21.  To  bring  action  for  falsifications  or  imitations 
of  a  registered  mark,  it  is  not  necessary  to  be  the  owner  thereof. 
Any  manufacturer  or  consumer  that  shall  consider  himself 
prejudiced  by  a  falsification  or  imitation  or  fraud — as  regards 
those  mentioned  in  the  present  law — shall  have  the  right  to 
denounce  and  prosecute  same.  When  the  complainant  is  not  the 
owner  of  the  mark  that  has  been  falsified,  seizure  shall  be  made 
in  behalf  of  the  Public  Treasury. 

ABT.  22.  In  case  of  seizure,  the  marks  that  shall  be  found 
not  to  have  been  used  shall  be  destroyed,  and  those  that  are 
affixed  to  the  corresponding  goods  shall  be  destroyed  or  ren- 
dered void. 

ABT.  23.  In  the  case  of  opposition  to  the  registration  of 
a  mark,  the  Executive  Power  shall  make  decision  within  the 
shortest  possible  time,  unless  it  be  indispensable  to  await  proofs 
that  will  accredit  the  facts  on  which  the  opposer  bases  his  action, 
in  which  case  there  shall  be  indicated  a  prudential  term,  at  the 
discretion  of  the  Executive  Power. 

ABT.  24.  In  case  of  the  undue  use  of  a  mark  of  manufac- 
ture or  of  commerce,  the  injured  party,  for  himself  or  through 
intermediary  of  an  attorney,  shall  lodge  his  complaint  before 
any  Examining  Magistrate,  who,  within  the  shortest  time  possi- 
ble, shall  repair  to  the  establishment,  store,  or  place,  in  which  is 
found  the  article  to  which  the  mark  has  been  illegally  affixed; 
he  shall  take  an  inventory  thereof,  having  it  appraised,  if  neces- 
sary, by  experts  to  be  appointed  and  sworn  in  by  him  in  the 
same  act,  and  he  shall  notify  the  owner  or  his  representative 
that  the  said  article  remains  under  embargo  until  the  case  shall 
be  decided,  or  he  shall  place  it  in  the  possession  of  another  per- 
son, if  he  so  deems  expedient.  The  complainant  shall  be  obliged 
to  deposit  with  the  respective  Receiver's  Office  or  the  Adminis- 
tration of  Finance,  as  guarantee  of  not  acting  in  bad  faith  and 
for  the  purpose  of  being  responsible  for  damages,  a  sum  equal 
to  the  third  part  of  the  value  of  the  article.  If  he  shall  not  effect 
the  deposit  within  the  two  days  following,  saving  the  case  of 
force  majeure  or  fortuitious  event  duly  proved,  the  action  shall 
cease;  and,  if  it  shall  be  proven  that  the  complaint  was  un- 
founded, there  shall  be  imposed  upon  the  complainant  a  fine  of 


PANAMA  717 

from  fifteen  to  fifty  balboas  (B.  15.00  to  B.  50.00),  and,  in  addi- 
tion, he  shall  be  obliged  to  pay  to  the  owner  of  the  article  the 
damages  caused,  according  to  the  equitable  estimation  of 
appraisers. 

ART.  25.  There  haying  been  carried  out  the  procedure  to 
which  the  preceding  article  refers,  the  official  before  whom  the 
complaint  shall  have  been  lodged  shall  draw  up  the  correspond- 
ing indictment,  shall  duly  authenticate  it,  and  remit  it  to  the 
respective  Circuit  Judge,  who  shall  give  his  decision,  in  accord- 
ance with  law,  in  primary  instance. 

ART.  26.  ...  Certificates  of  registration  of  marks  of 
manufacture  and  of  commerce  shall  be  issued  on  printed  forms 
of  fine  and  enduring  linen  paper  of  superior  quality.  On  said 
documents  there  shall  be  affixed  in  National  Revenue  stamps 
the  value  of  the  corresponding  stamped  paper. 

ART.  27.  The  Executive  Power,  if  it  be  necessary,  shall 
classify  articles  of  commerce  for  the  purpose  of  their  protection 
by  means  of  marks  of  manufacture  and  of  commerce.  The  Ex- 
ecutive Power  is  also  authorized  to  make  good  the  deficiencies 
that  in  practice  may  be  noted  in  the  laws  concerning  .  .  .  the 
registration  of  marks,  as  well  as  to  regulate  them,  should  there 
be  occasion  for  such,  and  modify  and  supplement  them  in  urgent 
cases. 


PARAGUAY 

LAW  OF  JULY  6,  1889 
TITLE  I 

OWNERSHIP  OF  TRADE  MARKS 

ARTICLE  1.  Marks  of  manufacture  or  of  commerce  shall  be : 
the  denominations  of  objects  and  the  names  of  persons  under  a 
particular  form,  emblems,  monograms,  engravings  or  prints, 
seals,  vignettes  and  reliefs,  letters  and  numerals  with  special 
design,  the  containers  or  wrappings  of  objects,  and  any  other 
sign  with  which  it  is  desired  to  distinguish  the  manufactures  of 
a  factory  or  the  objects  of  a  line  of  business. 

ART.  2.  A  mark  may  be  affixed  to  the  containers  or  wrap- 
pers of  the  objects  that  it  is  desired  to  distinguish. 

ART.  3.  There  shall  not  be  considered  as  marks  of  manu- 
facture or  of  commerce : 

1)  Letters,  words,  names  or  distinctives,  that  the  State  uses 
or  might  use ; 

2)  The  form  that  is  given  to  the  goods  by  the  manufacturer ; 

3)  The  color  of  the  goods; 

4)  Terms  or  locutions  that  have  passed  into  general  use; 

5)  Designations  usually  employed  for  indicating  the  nature 
of  the  goods,  or  the  class  to  which  they  belong ; 

6)  Designs  or  expressions  contrary  to  morality. 

ART.  4.  The  absolute  ownership  of  a  mark,  as  well  as  the 
right  to  lodge  opposition  against  the  use  by  any  other  person 
that  may,  directly  or  indirectly,  produce  confusion  between  the 
goods,  shall  belong  to  the  industrial  or  merchant  that  shall  have 
fulfilled  the  requisites  demanded  by  this  law. 

ART.  5.  The  exclusive  ownership  of  a  mark  may  only  be 
acquired  with  relation  to  industry  of  the  same  class. 

ART.  6.    The  use  of  a  mark  is  optional. 

Nevertheless,  it  may  be  obligatory,  when  the  necessities  of 
public  expedience  so  require. 

ART.  7.  The  ownership  of  a  mark  shall  pass  to  the  heirs 
and  it  may  be  transferred  by  contract  or  by  disposition  of  last 
will. 

ART.  8.  The  assignment  or  sale  of  the  establishment  shall 
comprehend  that  of  the  mark,  save  stipulation  to  the  contrary, 
and  the  assignee  shall  have  the  right  to  make  use  of  the  mark 
that  designates  it,  even  if  it  be  a  name,  in  the  same  way  as  the 


PARAGUAY  719 

assignor  did,  without  restrictions  other  than  those  expressly 
imposed  in  the  deed  of  sale  or  assignment. 

ART.  9.  The  transfer  of  a  mark  shall  be  recorded  in  the 
Office  in  which  it  was  registered,  to  the  end  of  acquiring  the 
right  to  use  it. 

ART.  10.  There  shall  be  considered  as  a  mark  in  use,  for 
the  effects  of  the  ownership  that  this  law  accords,  only  that  for 
which  the  Office  has  granted  the  corresponding  certificate. 

ART.  11.  The  protection  of  the  rights  of  the  manufacturer 
or  merchant  with  respect  to  the  exclusive  use  of  a  mark  shall 
endure  only  for  ten  years,  which  may  be  extended  indefinitely 
for  other  equal  terms  on  the  fulfillment  in  every  case  of  the 
necessary  formalities  and  on  the  payment  each  time  of  the  fee 
that  is  mentioned  later. 

TITLE  II 

FORMALITIES  FOR  ACQUIRING  OWNERSHIP  OF  A  MARK 
ART.  12.  Any  person  that  shall  desire  to  obtain  the  owner- 
ship of  a  mark  of  manufacture  or  of  commerce  shall  petition  it 
from  the  Board  of  Public  Credit,*  to  which  end  there  shall  be 
created  an  Office  of  Patents  and  Marks  of  Manufacture  and  of 
Commerce,  the  said  bureau  being  placed  under  the  supervision 
of  the  Board  of  Public  Credit. 

ART.  13.  The  application  for  obtaining  a  mark  must  be 
accompanied  by : 

1)  Two  fascimiles  of  the  mark  or  of  the  distinctive  sign  of 
which  it  is  desired  to  make  use ; 

2)  A  description  in  duplicate  of  the  mark  or  of  the  sign, 
if  it  is  a  matter  of  figures  or  of  emblems;  there  having  to  be 
indicated  the  class  of  objects  for  which  they  are  intended  and 
whether  they  are  to  be  affixed  to  the  products  of  a  factory  or  to 
an  article  of  commerce ; 

3)  A  receipt  that  evidences  the  payment  made  to  the  Treas- 
ury of  the  Board  of  Public  Credit,  through  intermediary  of  the 
Office  of  the  Auditor  General  of  the  Nation,  of  the  amount  of  the 
fee  fixed  in  Art.  19 ; 

4)  A  formal  power,  in  case  the  applicant  does  not  appear 
in  person. 

ART.  14.  Applications  that  are  presented  shall  be  entered 
by  means  of  a  brief  statement  that  shall  give  a  resume  of  their 
contents  and  the  date  and  hour  of  their  presentation,  in  a  book 

*The  Law  of  August  8,  1892,  abolishing  the  Board  of  Public  Credit,  left 
the  Office  of  Patents  and  Marks  of  Manufacture  and  Commerce  under  the 
supervision  of  the  General  Treasury  of  the  Nation,  and  on  June  5,  1905,  it  was 
placed  under  the  supervision  of  the  Office  for  the  Collection  of  Internal 
Revenue. 


720  PARAGUAY 

whose  sheets  shall  be  numbered  and  rubricated  by  the  Minister 
of  Finance. 

This  entry  shall  be  signed  by  the  President  of  the  Board  of 
Public  Credit,  or,  in  his  absence,  by  a  member  of  the  same 
bureau,  the  Secretary,  and  the  applicant,  there  having  to  be 
given  to  the  latter  a  copy  thereof,  if  he  shall  ask  for  same,  on 
stamped  paper  of  fifty  centavos. 

ART.  15.  Priority  as  regards  the  ownership  of  a  mark  shall 
be  granted  in  accordance  with  the  day  and  the  hour  on  which  the 
application  shall  be  presented  at  the  Office. 

ART.  16.  The  certificate  of  the  mark  that  the  Patent  Office 
gives  shall  consist  of  a  certification  of  the  decree  that  grants 
it,  accompanied  by  a  duplicate  of  the  description  and  of  the 
designs ;  it  shall  be  drawn  up  in  the  name  of  the  Nation,  there 
being  invoked  therein  the  authorization  of  the  Government,  and 
it  shall  be  signed  by  the  President  of  the  Board  of  Public  Credit 
and  the  Secretary  of  the  same,  and  shall  bear  the  seal  of  that 
bureau. 

ART.  17.  Any  resolution  of  the  Board  of  Public  Credit 
denying  the  ownership  of  a  mark  may  be  appealed  within  the 
ten  following  days  to  the  Ministry  of  Finance,  which,  after  hear- 
ing the  Attorney  General  of  the  State,  shall  confirm  or  reverse 
the  denial. 

ART.  18.  The  Board  of  Public  Credit  shall  open  a  book  in 
which  shall  be  entered  in  serial  order  the  grants  of  marks,  the 
President  having  to  give  every  three  months  to  the  Minister  of 
Finance  a  statement  as  regards  certificates  granted  and  of  those 
that  shall  have  been  denied,  there  being  stated  their  respective 
dates. 

This  statement  shall  be  published  in  the  press. 

ART.  19.  For  the  registration  of  each  mark  of  manufac- 
ture and  of  commerce  of  foreign  origin  there  shall  be  paid 
twenty  pesos  gold,  and  of  domestic  origin,  fifty  pesos  currency. 

For  every  certified  copy  that  shall  be  solicited  there  shall 
be  paid  twenty  pesos  currency,  and  the  fee  for  stamps  is  raised 
to  two  pesos  per  sheet. 

ART.  20.  Marks  for  which  certificates  are  issued  shall 
remain  archived  with  the  Board  of  Public  Credit. 

In  case  of  litigation  there  shall  be  exhibited  before  the 
competent  judge  the  design  of  the  mark,  as  well  as  attestation 
of  the  description  thereof  or  of  any  other  exhibit  concerning 
the  question. 

ART.  21.  Marks,  as  well  as  their  descriptions,  shall  be  held 
in  the  Office  at  the  disposition  of  whoever  shall  desire  to  con- 
sult them. 


PARAGUAY  721 

TITLE  III 

NAMES  OF  MANUFACTURE  AND  OF  COMMERCE 

AET.  22.  The  name  of  a  merchant,  and  of  a  firm,  that  of  a 
sign  or  designation  of  a  house  that  deals  in  determined  articles, 
shall  constitute  an  industrial  property  for  the  effects  of  this  law. 

ART.  23.  If  a  merchant  shall  desire  to  carry  on  an  industry 
already  under  exploitation  by  another  person,  with  the  same 
name,  or  with  the  same  conventional  designation,  he  shall  adopt 
a  modification  that  will  make  that  name  or  that  designation 
visibly  different  from  the  one  that  the  pre-existing  house  uses. 

ART.  24.  If  the  one  injured  by  the  use  of  a  name  of  manu- 
facture or  of  commerce  does  not  make  claim  within  the  term 
of  one  year  from  the  day  it  began  to  be  used  by  the  other  per- 
son, his  action  shall  be  barred  by  limitation. 

ART.  25.  Joint  stock  corporations  shall  have  the  right  to 
the  name  that  they  use,  the  same  as  any  private  individual,  and 
shall  be  subject  to  the  same  limitations. 

ART.  26.  The  right  to  the  exclusive  use  of  a  name  as  indus- 
trial property  shall  expire  along  with  the  commercial  house  that 
bears  it,  or  along  with  the  exploitation  of  the  branch  of  industry. 

ART.  27.  There  shall  not  be  necessary  the  registration  of 
a  name  in  order  to  exercise  the  rights  accorded  by  this  law,  save 
the  case  in  which  it  shall  form  part  of  a  mark. 

TITLE  IV 

PENAL  PROVISIONS 

ART.  28.  They  shall  be  punished  by  a  fine  of  from  20  to 
500  pesos,  or  imprisonment  of  from  fifteen  days  to  one  year: 

1)  That  falsify  or  change  in  any  way  a  mark  of  Manufac- 
ture or  of  commerce; 

2)  That  affix  to  their  products  or  the  articles  of  their  com- 
merce a  mark  belonging  to  another ; 

3)  That  knowingly  sell,  place  on  sale,  or  are  prepared  to 
sell  or  to  circulate,  articles  with  a  counterfeit  or  fraudulently 
affixed  mark; 

4)  That  knowingly  sell,  offer  for  sale,  or  are  ready  to  sell, 
counterfeit  marks,  and  those  that  sell  authentic  marks  without 
the  knowledge  of  their  owner ; 

5)  All  those  that  with  fraudulent  intention  shall  be  of  the 
intention  to  affix,  or  shall  cause  to  be  placed,  upon  merchandise 
an  announcement  or  any  other  designation  false  with  relation 
to  the  nature,  quality,  quantity,  number,  weight  or  measure,  or 
the  place  or  country  in  which  it  has  been  manufactured  or 
marketed ; 


722  PARAGUAY 

6)  Those  that  knowingly  sell,  offer  for  sale,  or  are  ready  to 
sell,  any  goods  of  those  declared  false  mentioned  in  the  preced- 
ing paragraph. 

In  case  of  repetition  these  penalties  shall  be  doubled. 

ART.  29.  In  order  that  it  be  considered  a  crime,  it  is  not 
necessary  that  the  falsification  shall  embrace  all  the  objects  that 
were  to  be  marked,  there  sufficing  the  affixing  to  a  single  article. 

ART.  30.  Simple  attempt  shall  not  incur  penalty  nor  cause 
civil  responsibility,  but  shall  occasion  the  destruction  of  the 
instruments  that  were  intended  to  serve  exclusively  for  the 
falsification. 

ART.  31.  Those  that  sell  or  place  on  sale  goods  with  a 
usurped  or  falsified  mark  shall  be  obliged  to  give  to  the  mer- 
chant or  manufacturer,  owner  thereof,  complete  information  in 
writing  regarding  the  name  and  the  address  of  him  who  shall 
have  sold  or  obtained  the  merchandise,  as  well  as  regards  the 
time  at  which  the  sale  has  commenced,  and,  in  case  of  refusal, 
they  may  be  legally  compelled,  under  pain  of  being  considered 
as  accomplices  of  the  guilty  parties. 

ART.  32.  Goods  with  a  falsified  mark  that  are  found  in  the 
possession  of  the  counterfeiter  or  of  his  agents  shall  be  con- 
fiscated, and  their  proceeds,  after  payment  of  the  costs  and  the 
indemnifications  established  by  this  law,  shall  be  adjudicated  to 
the  benefit  of  the  National  schools. 

ART.  33.  Falsified  marks  that  are  found  in  the  possession 
of  the  counterfeiter  or  of  his  agents  shall  be  destroyed,  as  well 
as  the  instruments  that  have  served  specially  for  their  falsi- 
fication. 

ART.  34.  Criminal  action  may  not  be  lodged  officially  and 
shall  correspond  solely  to  the  individuals  interested,  but,  once 
begun,  it  may  be  continued  by  the  Government  Attorney. 

The  plaintiff  may  withdraw  from  his  action  at  any  time 
prior  to  the  rendering  of  sentence. 

ART.  35.  Those  damaged  through  contravention  of  the 
precepts  of  this  law  may  bring  action  for  damages  and  injuries 
against  the  authors  of  and  accomplices  in  the  fraud. 

Sentences  of  condemnation  shall  be  published  at  the  cost 
of  the  offender. 

ART.  36.  Civil  or  criminal  action  may  not  be  brought  after 
the  expiration  of  three  years  from  the  commission  or  repetition 
of  the  crime,  or  after  one  year  counted  from  the  day  on  which 
the  owner  of  the  mark  first  had  knowledge  of  the  fact. 

Acts  that  interrupt  the  statute  of  limitations  are  those  that 
are  specified  by  Common  Law. 

ART.  37.    The  dispositions  contained  in  the  articles  of  the 


PARAGUAY  723 

present  Title  shall  be  applicable  as  respects  those  that  illegally 
make  use  of  the  name  of  a  merchant  or  the  designation  of  a 
house  of  commerce  or  of  manufacture,  in  accordance  with  what 
is  established  in  Title  II  of  the  present  law. 

TITLE  V 

TRANSITORY  PROVISIONS 

ART.  38.  Industrials  that,  on  the  promulgation  of  this  law, 
shall  be  in  possession  of  a  mark  within  the  territory  of  the 
Republic,  shall  not  be  able  to  obtain  the  exclusive  right  to  the 
exclusive  use  thereof  unless  they  fulfill  the  conditions  required 
by  the  present  law.  To  this  end  there  is  accorded  to  them  a 
term  of  one  year,  counting  from  the  day  of  its  promulgation. 

ART.  39.  If,  prior  to  the  promulgation  of  this  law,  various 
industrials  shall  have  made  use  of  the  same  mark,  the  right  to 
the  exclusive  use  thereof  shall  belong  to  him  that  shall  have 
made  use  of  such  mark  before  the  others. 

ART.  40.  If  none  of  those  interested  shall  be  able  to  show 
the  priority  of  time  indicated  in  Art.  38,  no  one  shall  be  able  to 
prevail  as  regards  the  use  made  thereof  prior  to  the  sanction 
of  the  present  law  for  claiming  the  right  of  priority. 

ART.  41.  Prior  to  the  issuance  of  a  certificate  of  a  mark 
within  the  first  year  of  effectiveness  of  this  law,  the  petition  of 
the  applicant  or  applicants  shall  be  published  for  a  term  of  thirty 
days  and  at  his  or  their  expense  in  a  daily  paper  of  the  Capital 
of  the  Republic,  or  in  one  of  the  place  of  his  or  their  residence, 
the  case  occurring. 

ART.  42.  In  order  that  foreign  marks  shall  enjoy  the  guar- 
antees that  this  law  accords,  they  shall  be  registered  in  accord- 
ance with  its  prescriptions. 

The  proprietors  thereof  or  their  duly  authorized  agents 
shall  be  the  only  persons  that  may  solicit  registration. 

ART.  43.  The  Executive  Power  shall  make  regulations  for 
the  present  law. 

ART.  44.    Be  it  communicated  to  the  Executive  Power. 


DECREE  NO.  9769  OF  APRIL  22,  1919 

It  being  necessary  to  establish  efficacious  protection  in  favor 
of  the  owners  of  foreign  marks  of  manufacture  and  of  com- 
merce, and,  in  accordance  with  Art.  43  of  the  Law  of  July  6, 1889, 

The  President  of  the  Republic 

Decrees : 

ARTICLE  1.    For  the  registration  of  a  mark  of  manufacture 


724  PARAGUAY 

or  of  commerce  for  foreign  products  the  Direction  of  Internal 
Revenue  shall  require  proof  of  the  right  of  ownership  from  the 
applicant  for  said  mark. 

ART.  2.  Ownership  of  the  mark  shall  he  justified  through 
one  of  the  following  means : 

1)  Presentation  of  the  certificate  of  registration  issued  by 
the  corresponding  authority,  or  a  legalized  copy; 

2)  Presentation  of  the  certificate  of  registration  issued  by 
the  Consulate  of  the  nationality  of  the  applicant  to  the  effect 
that  the  latter  is  the  owner  of  the  mark; 

3)  Any  other  means  to  the  satisfaction  of  the  Direction  of 
Internal  Revenue. 

ART.  3.  In  order  to  register  new  marks  intended  to  dis- 
tinguish foreign  products  for  exclusive  sale  within  the  country, 
the  applicant  shall  give  evidence  of  this  circumstance  on  making 
application  for  registration.  In  case  of  false  declaration,  the 
Direction  of  Internal  Revenue  may  on  its  own  initiative  annul 
the  registration. 

AET.  4.  Be  it  communicated,  published,  and  delivered  to 
the  Official  Registrar. 


PERU 

LAW  OF  DECEMBER  19,  1892 

ARTICLE  1.  Any  person  or  industrial  society  may  solicit  and 
obtain  the  official  registration  of  the  denominations  of  objects, 
or  the  name  of  persons,  that  are  written  in  a  special  form,  as 
likewise,  emblems,  monograms,  engravings  or  designs,  seals, 
vignettes  and  reliefs,  letters  and  ciphers  of  a  determined  form, 
the  containers,  coverings,  or  wrappings  of  articles,  and,  in  gen- 
eral, any  sign  or  distinctive  employed  so  that  the  products  of  a 
factory  or  articles  of  commerce  of  one  class  may  be  differen- 
tiated from  others. 

ART.  2.  The  use  of  a  mark  is  optional ;  however,  it  shall  be 
obligatory  when  public  expedience  so  requires. 

ART.  3.  There  shall  not  be  susceptible  of  registration  as  a 
mark  of  manufacture : 

1)  Letters,  words,  names  or  distinctives  that  the  State  uses 
or  may  use ; 

2)  The  form  that  the  manufacturer  has  given  to  the  article; 

3)  The  color  of  the  product; 

4)  Terms  or  locutions  that  are  in  general  use ; 

5)  Designations  that  are  usually  employed  for  indicating 
the  nature  of  the  products  or  the  class  to  which  they  pertain ; 

6)  Immoral  designs  or  expressions. 

ART.  4.  The  right  of  ownership  that  is  recognized  for  a 
registered  mark  of  manufacture  shall  endure  for  ten  years ;  the 
registration  being  possible  of  being  renewed  for  an  equal  period 
within  the  last  six  months  of  the  term,  by  there  being  observed 
the  same  formalities,  and  on  payment  of  the  same  fees,  as  for 
the  first  registration. 

ART.  5.  The  registration  of  a  mark  of  manufacture  implies 
the  acknowledgment  of  absolute  dominion  thereover  on  the  part 
of  him  that  has  obtained  it,  and  the  right  that  he  may  exercise 
in  legally  opposing  and  prosecuting  the  use  of  any  other  mark 
that,  directly  or  indirectly,  shall  cause  confusion  as  to  similar 
articles  of  different  origin;  this  right  of  ownership  shall  only 
extend  to  industries  of  the  same  class. 

ART.  6.  The  right  of  ownership  of  marks  of  manufacture 
shall  pass  to  the  heirs,  and  is  transmissible  by  contract  and 
through  disposition  of  last  will. 

ART.  7.  It  is  understood  that  the  right  of  ownership  of  a 
mark  shall  be  transferred  along  with  the  factory  or  establish- 


726  PERU 

ment  that  uses  it,  when  it  is  sold  or  transferred,  and  provided 
that  nothing  to  the  contrary  is  stipulated  or  expressed. 

The  transfer  shall  be  recorded  in  the  Office  in  which  the 
mark  was  registered. 

ART.  8.  For  legal  effects  there  shall  be  considered  valid 
and  effective  only  those  marks  of  manufacture  for  which  a  cer- 
tificate of  registration  has  been  issued  by  the  respective  Office. 

ART.  9.  Priority  or  preference  as  to  the  ownership  of  a 
mark  of  manufacture  shall  be  determined  by  the  date  on  which 
was  presented  the  application  for  registering  it. 

ART.  10.  To  obtain  the  ownership  of  a  mark  of  manufac- 
ture it  is  necessary : 

1)  To  present  an  application  at  the  Ministry  of  Finance  and 
Commerce,  there  being  included  two  facsimiles  of  the  mark  that 
is  to  be  registered ; 

2)  To  present,  likewise  in  duplicate,  a  description  of  the 
mark  or  sign,  when  it  consists  of  a  figure  or  emblem ; 

3)  To  designate  the  class  of  objects  to  which  the  mark  or 
sign  is  affixed,  or  is  intended  to  be  affixed,  and  explain  whether 
it  is  to  differentiate  the  products  of  some  factory  or  to  distin- 
guish a  determined  group  of  articles  of  commerce; 

4)  To  evidence  with  the  receipt  of  the  General  Treasury 
that  the  registration  fees  have  been  paid ; 

5)  To  present  the  power  of  attorney  granted  by  the  manu- 
facturer or  merchant — owner  of  the  mark — in  whose  name  the 
registration  is  solicited,  when  the  applicant  does  not  appear  in 
person. 

ART.  11.  In  the  Directorate  of  Industry  of  the  Ministry 
of  Finance  and  Commerce  there  shall  be  opened  a  Register  for 
foreign  marks,  and  another  for  national  factories  or  establish- 
ments, in  which  succinct  note  shall  be  taken  of  applications  filed, 
there  being  stated  the  day  and  hour  of  presentation.  Each  one 
of  the  entries  shall  be  signed  by  the  Chief  of  the  Office,  the  Secre- 
tary or  clerk  of  the  same,  and  the  applicant ;  to  this  last  named 
there  shall  be  given — without  cost  other  than  that  of  the  admin- 
istrative stamped  paper — a  copy  of  the  entry  cited.  These  Reg- 
isters shall  be  foliated  and  their  sheets  rubricated  by  the  Minis- 
ter of  Finance. 

ART.  12.  The  same  Office  shall  also  open  a  Book  in  which 
shall  be  noted  in  order  of  date  the  concessions  that  are  granted 
for  the  ownership  of  marks  of  manufacture ;  the  Chief  present- 
ing semi-annually  to  the  Government  the  list  of  those  allowed 
or  rejected  during  that  period,  with  indication  of  the  dates,  which 
same  must  be  published. 

ART.  13.    The  marks  of  manufacture,  classified,  shall  be 


PERU  727 

preserved  in  the  archives  of  the  Office,  the  originals  having  to 
be  presented  in  case  of  litigation.  They  may  also  be  consulted 
in  the  Office  by  the  public. 

ART.  14.  The  certificate  of  ownership  of  a  mark  that  the 
Office  issues  shall  bear  annexed  the  duplicate  of  the  description 
and  of  the  design  that  were  presented  along  with  the  application, 
and  it  shall  be  sealed  and  signed  by  the  Chief  thereof,  in  the 
name  of  the  Nation  and  under  the  authority  of  the  Government. 

ART.  15.  Reconsideration  of  any  decision  that  shall  have 
been  given  rejecting  the  registration  of  a  mark  may,  within  a 
term  of  thirty  days,  be  petitioned  of  the  Government,  which  shall 
decide  same  after  previously  hearing  the  Attorney  of  the  Most 
Excellent  Supreme  Court. 

ART.  16.  Applicants  or  their  representatives  shall  pay  the 
following  fees : 

For  the  registration  of  a  foreign  mark  or  name,  one  hundred 
soles,  silver; 

For  registration  of  an  assignment  and  for  issuing  the  cer- 
tificate that  accredits  same,  fifty  soles ; 

For  certificate  of  first  registration,  forty  soles ;  and 

For  each  duplicate  certified  copy,  twenty  soles,  there  being 
paid  in  addition  the  amount  of  the  administrative  stamped  paper 
on  which  these  documents  are  drawn  up. 

This  tariff  shall  be  one  quarter  as  much  if  the  factory  or 
establishment  is  national. 

ART.  17.  For  the  effects  of  this  law  there  shall  constitute 
industrial  property:  the  name  of  a  merchant  or  that  of  a  mer- 
cantile or  industrial  society,  or  the  title  or  designation  of  a  house 
that  traffics  or  deals  in  any  article. 

ART.  18.  The  manufacturer  or  merchant  that  engages  in 
an  industry  in  which  another  person  has  been  engaged  under  the 
same  name,  shall  have  to  modify  this,  so  that  the  denomination 
will  be  different. 

ART.  19.  Any  protest  by  an  interested  party  for  injuries 
that  he  shall  suffer  must  be  made  within  the  term  of  one  year. 

ART.  20.  Legal  persons  or  corporations  shall  have  the 
same  rights  as  individuals  with  respect  to  the  ownership  of  their 
names,  and  they  shall  be  subject  to  the  same  conditions  as  the 
latter. 

ART.  21.  The  exclusive  right  to  the  use  of  a  name — consid- 
ered as  industrial  property — shall  terminate  with  the  closing 
of  the  house  or  factory,  or  with  the  cessation  of  the  industry,  to 
which  the  right  refers. 

ART.  22.  To  enjoy  the  benefits  of  the  law  as  regards  the 
ownership  of  a  name,  it  is  not  necessary  that  this  be  registered ; 


728  PERU 

however,  registration  is  indispensable  when  it  forms  part  of  a 
mark  of  manufacture. 

ABT.  23.  Usurpation  of  the  right  of  ownership  of  a  mark 
of  manufacture  shall  be  punished  by  fines  of  from  twenty-five  to 
five  hundred  soles,  or  with  imprisonment  of  from  forty  days  to 
six  months.  There  shall  be  liable  to  this  penalty : 

1)  Those  that  falsify  or  change  in  any  way  a  mark  of  com- 
merce or  of  manufacture ; 

2)  Those  that  place  upon  their  own  products  or  articles  of 
commerce  a  mark  that  belongs  to  another  person; 

3)  Those  that  knowingly  sell,  offer  for  sale,  or  agree  that 
there  be  sold  to  them,  or  consent  to  sell  or  circulate,  articles  that 
bear  counterfeit  or  fraudulently  affixed  marks ; 

4)  Those  that  knowingly  sell,  offer  for  sale,  or  agree  that 
there  be  sold  to  them,  counterfeit  marks,  or  even  authentic 
marks,  without  the  consent  of  their  legitimate  owners ; 

5)  Those  that,  with  intention  to  defraud,  mark  or  have 
marked,  articles  with  false  labels  or  designations,  whether  with 
respect  to  the  nature,  quality,  quantity,  number,  weight,  or 
measure,  or  of  the  country  of  origin  or  manufacture ; 

6)  Those  that  knowingly  sell,  offer  for  sale,  or  agree  that 
there  be  sold  to  them,  articles  with  the  false  indications  to  which 
the  preceding  paragraph  refers. 

ART.  24.    In  cases  of  repetition  the  penalty  shall  be  doubled. 

ART.  25.  In  order  that  there  be  infraction  or  usurpation  of 
the  right,  it  shall  suffice  that  the  counterfeit  mark  shall  have 
been  affixed  to  a  single  article. 

ART.  26.  Those  that  have  sold  or  shall  have  for  sale  any 
article  with  a  counterfeit  mark,  infringing  or  usurping  legitimate 
rights,  shall  be  obliged  to  inform  in  writing  the  proprietor  of  the 
mark  with  reference  to  the  name  and  address  of  the  persons 
from  whom  they  have  made  the  purchase,  or  from  whom  they 
have  received  the  offer,  and  the  dates  on  which  negotiations 
commenced.  Whoever  shall  refuse  to  supply  this  information 
may  be  compelled  judicially,  under  pain  of  being  held  as  an 
accomplice  in  or  concealer  of  the  fraud. 

ART.  27.  Articles  with  a  counterfeit  mark  that  are  found 
in  the  possession  of  the  counterfeiter  or  his  agents  shall  be  con- 
fiscated and  sold,  the  proceeds  of  the  sale  being  applied  to  the 
payment  of  the  costs  and  indemnification  established  by  law; 
and  the  excess,  to  the  schools  of  the  Provinces  in  which  the 
sequestration  was  made. 

ART.  28.  False  marks  that  are  found  in  the  possession  of 
the  transgressor,  and  the  instruments  and  tools  employed  in  the 
falsification,  shall  be  destroyed. 


PERU  729 

ART.  29.  The  right  of  making  criminal  accusation  against 
transgressors  shall  pertain  exclusively  to  the  one  injured ;  how- 
ever, the  proceedings  once  begun,  the  State's  Attorney  shall  take 
part.  The  plaintiff  may,  nevertheless,  at  any  time,  before  the 
delivery  of  judgment,  withdraw  from  the  accusation  and  ter- 
minate the  case. 

ART.  30.  Persons  injured  may  institute  civil  action  for 
damages  and  injuries  against  the  authors  of  the  fraud  and  their 
accomplices.  The  sentence  shall  be  published  at  the  cost  of  the 
guilty  party.  The  action  shall  become  outlawed  in  three  years 
from  the  commission  of  the  infraction,  and  one  year  after  the 
owner  shall  have  had  knowledge  thereof. 

ART.  31.  In  cases  of  usurpation  of  a  name  there  shall  pre- 
vail the  same  dispositions  as  prescribed  for  marks  of  manu- 
facture. 

ART.  32.  Registrations  of  marks  that  the  Municipal  Coun- 
cils have  effected  shall  be  revalidated  on  petition  of  those  inter- 
ested, making  them  extensive  to  all  the  territory  of  the  Republic, 
and  there  shall  be  paid,  in  this  case,  one-half  of  the  respec- 
tive fee. 

ART.  33.  The  Provincial  Councils  being  prohibited  from 
making  provisions  in  this  matter  shall  deliver  to  the  Ministry 
of  Finance  the  Books  for  the  Registration  of  Marks  that  are  in 
their  possession. 

TRANSITORY  PROVISIONS 

ART.  34.  Industrials  that,  on  the  promulgation  of  this  law, 
shall  be  in  possession  of  a  mark  within  the  territory  of  the  Re- 
public, shall  not  be  able  to  obtain  the  right  of  exclusive  use 
thereof  save  by  complying  with  the  conditions  required  by  the 
present  law. 

To  this  end  there  is  accorded  them  the  term  of  one  year, 
counting  from  the  day  of  its  promulgation. 

ART.  35.  If,  prior  to  the  promulgation  of  this  law,  various 
industrials  shall  have  made  use  of  the  same  mark,  the  right  of 
exclusive  use  thereof  shall  pertain  to  him  that  shall  show  that 
he  has  used  such  mark  before  the  others. 

If  none  of  those  interested  shall  be  able  to  justify  priority 
in  the  use  of  the  mark,  the  ownership  thereof  shall  be  granted 
to  him  that  pays  the  greatest  commercial  matriculation  fee. 

If  the  matriculation  fees  are  equal,  he  shall  be  preferred 
that  has  employees  in  the  factory  of  the  greatest  number  of 
national  operatives. 

ART.  36.  A  mark  not  having  been  registered  within  the 
term  fixed  by  Art.  34,  no  one  may,  for  claiming  the  right  of  pri- 


730  PERU 

ority,  avail  himself  of  the  use  thereof  prior  to  the  sanction  of 
the  present  law. 

ART.  37.  Before  the  issue  of  a  certificate  of  a  mark  during 
the  first  year  of  the  effectiveness  of  this  law,  the  petition  of  the 
applicant  or  applicants  must  be  published,  at  his  or  their  cost, 
for  the  term  of  thirty  days  in  a  periodical  of  the  Capital  of  the 
Republic,  and  in  one  of  the  place  of  his  or  their  residence. 


PHILIPPINE  ISLANDS 

LAW  NO.  666  OF  MARCH  6,  1903 

SECTION  1.  A  trade  mark  is  a  name,  emblem,  sign,  or  de- 
vice, employed  by  any  person,  firm  or  corporation,  to  designate 
the  goods  dealt  in  or  manufactured  by  such  person,  firm  or  cor- 
poration, for  the  purpose  of  enabling  the  public  to  recognize 
such  goods  and  manufacture,  and  to  distinguish  them  from  the 
goods  and  manufactures  of  others. 

SEC.  2.  Anyone  who  produces,  or  deals  in,  merchandise  of 
any  kind  by  actual  use  thereof,  in  trade  may  appropriate  to  his 
exclusive  use  a  trade  mark,  not  so  appropriated  by  another,  to 
designate  the  origin  or  ownership  thereof:  Provided,  That  a 
designation  or  part  of  a  designation  which  relates  only  to  the 
name,  quality,  or  description  of  the  merchandise  or  geographi- 
cal place  of  its  production  or  origin,  can  not  be  the  subject  of  a 
trade  mark. 

SEC.  3.  The  ownership  or  possession  of  a  trade  mark, 
heretofore  or  hereafter  appropriated,  as  in  the  foregoing  sec- 
tion provided,  shall  be  recognized  and  protected  in  the  same 
manner,  and  to  the  same  extent,  as  are  other  property  rights 
known  to  the  law.  To  this  end  any  person  entitled  to  the  ex- 
clusive use  of  a  trade  mark  to  designate  the  origin  or  owner- 
ship of  goods  he  has  made  or  deals  in,  may  recover  damages  in 
a  civil  action  from  any  person  who  has  sold  goods  of  a  similar 
kind,  bearing  such  trade  mark,  and  the  measure  of  the  damages 
suffered,  at  the  option  of  the  complaining  party,  shall  be  either 
the  reasonable  profit  which  the  complaining  party  would  have 
made  had  the  defendant  not  sold  the  goods  with  the  trade  mark 
aforesaid,  or  the  profit  which  the  defendant  actually  made  out 
of  the  sale  of  the  goods  with  the  trade  mark,  and  in  cases  where 
actual  intent  to  mislead  the  public  or  to  defraud  the  owner  of 
the  trade  mark  shall  be  shown,  in  the  discretion  of  the  court, 
the  damages  may  be  doubled.  The  complaining  party,  upon 
proper  showing,  may  have  a  preliminary  injunction  restraining 
the  defendant  temporarily  from  use  of  the  trade  mark  pending 
the  hearing,  to  be  granted  or  dissolved  in  the  manner  provided 
in  the  code  of  civil  procedure,  and  such  injunction  upon  final 
hearing,  if  the  complainant's  property  in  the  trade  mark  and 
the  defendant's  violation  thereof  shall  be  fully  established,  shall 
be  made  perpetual,  and  this  injunction  shall  be  part  of  the  judg- 
ment for  damages  to  be  rendered  in  the  same  cause  as  above 
provided. 


732  PHILIPPINE  ISLANDS 

SEC.  4.  In  order  to  justify  recovery  for  violation  of  trade 
mark  rights  in  the  preceding  section  denned,  it  shall  not  be 
necessary  to  show  that  the  trade  marks  have  been  registered 
under  the  royal  decree  of  eighteen  hundred  and  eighty-eight, 
providing  for  registration  of  trade  marks  in  the  Philippine 
Islands,  in  force  during  the  Spanish  sovereignty  in  these 
Islands,  nor  shall  it  be  necessary  to  show  that  the  trade  mark, 
has  been  registered  under  this  Act.  It  shall  be  sufficient  to 
invoke  protection  of  his  property  in  a  trade  mark  if  the  party 
complaining  shall  prove  that  he  has  used  the  trade  mark 
claimed  by  him  upon  his  goods  a  sufficient  length  of  time  so 
that  the  use  of  the  trade  mark  by  another  would  be  an  injury 
to  him  and  calculated  to  deceive  the  public  into  the  belief  that 
the  goods  of  that  other  were  the  goods  manufactured  or  dealt 
in  by  the  complaining  party. 

SEC.  5.  A  trade  name  is  the  name,  device,  or  mark  by 
which  is  intended  to  be  distinguished  from  that  of  others,  the 
business,  profession,  trade  or  occupation  in  which  one  may  be 
engaged  and  in  which  goods  are  manufactured  or  sold  to  the 
public,  work  is  done  for  the  public,  or  professional  services  are 
rendered  to  the  public.  It  is  not  essential  that  the  trade  name 
should  appear  on  the  goods  manufactured  or  dealt  in  by  the 
person  owning  or  using  the  same.  It  is  sufficient  if  the  trade 
name  is  used  by  way  of  advertisements,  signs  over  the  place 
of  business,  upon  letter  heads,  and  in  other  ways  to  furnish  to 
the  public  a  method  of  distinguishing  the  business,  trade,  or 
occupation  of  the  person  owning  and  using  such  name.  Proper- 
ty in  trade  names  shall  be  as  fully  protected  as  property  in  a 
trade  mark  by  the  civil  remedies  provided  in  section  three  of 
this  Act  for  the  protection  of  property  in  trade  marks. 

SEC.  6.  Any  person  who,  with  intent  to  defraud  the  public 
or  the  owner  of  a  trade  mark  or  trade  name,  shall  use  the  trade 
mark  of  another  on  his  goods  offered  for  sale,  or  the  trade  name 
of  another  in  his  business,  occupation  or  profession,  and  any 
person  who,  knowing  that  a  trade  mark  has  been  fraudulently 
used  on  goods  with  the  intent  aforesaid,  shall  sell  such  goods  or 
offer  the  same  for  sale  and  any  person  who  shall  knowingly  aid 
or  abet  another  in  such  fraudulent  use  of  a  trade  mark  or  trade 
name,  shall  be  punished  by  a  fine  of  not  exceeding  two  thousand 
five  hundred  dollars,  or  by  imprisonment  not  exceeding  three 
years,  or  both,  in  the  discretion  of  the  court.  Any  person  know- 
ing the  purposes  for  which  such  trade  mark  or  trade  name  is  to 
be  used,  and  that  it  is  the  property  of  one  person,  prints,  litho- 
graphs, or  in  any  way  reproduces  such  trade  mark  or  trade 
name,  or  a  colorable  imitation  thereof,  for  another  person,  to 


PHILIPPINE  ISLANDS  733 

enable  that  other  person  fraudulently  to  use  such  trade  mark  or 
trade  name  in  the  deception  of  the  public  and  the  defrauding  of 
the  real  owner  of  the  trade  mark  or  trade  name,  shall  be  pun- 
ished by  a  fine  not  exceeding  one  thousand  dollars,  or  by  impris- 
onment not  exceeding  eighteen  months,  or  both,  in  the  discre- 
tion of  the  court. 

SEC.  7.  Any  person  who  in  selling  his  goods  shall  give 
them  the  general  appearance  of  goods  of  another  manufacturer 
or  dealer,  either  in  the  wrapping  of  the  packages  in  which  they 
are  contained,  or  the  devices  or  words  thereon,  or  in  any  other 
feature  of  their  appearance,  which  would  be  likely  to  influence 
purchasers  to  believe  that  the  goods  offered  are  those  of  a  man- 
ufacturer or  dealer  other  than  the  actual  manufacturer  or  deal- 
er, and  who  clothes  the  goods  with  such  appearance  for  the 
purpose  of  deceiving  the  public  and  defrauding  another  of  his 
legitimate  trade,  or  any  subsequent  vendor  of  such  goods  or  any 
agent  of  any  vendor  engaged  in  selling  such  goods  with  a  like 
purpose,  shall  be  guilty  of  unfair  competition,  and  shall  be  lia- 
ble to  an  action  for  damages,  in  which  the  measure  shall  be  the 
same  as  that  provided  for  a  violation  of  trade  mark  rights,  to- 
gether with  discretionary  power  in  the  court  to  impose  double 
damages,  if  the  circumstances  call  for  the  same.  The  injured 
party  may  also  have  a  remedy  by  injunction  similar  to  that  pro- 
vided for  in  cases  of  violation  of  trade  marks.  This  section 
applies  in  cases  where  the  deceitful  appearance  of  the  goods, 
misleading  as  to  origin  or  ownership,  is  effected  not  by  means 
of  technical  trade  marks,  emblems,  signs,  or  devices,  but  by  the 
general  appearance  of  the  package  containing  the  goods,  or  by 
the  devices  or  words  thereon,  even  though  such  packages,  de- 
vices, or  words  are  not  by  law  capable  of  appropriation  as  trade 
marks ;  and  in  order  that  the  action  shall  lie  under  this  section, 
actual  intent  to  deceive  the  public  and  defraud  a  competitor 
shall  affirmatively  appear  on  the  part  of  the  person  sought  to 
be  made  liable,  but  such  intent  may  be  inferred  from  similarity 
in  the  appearance  of  the  goods  as  packed  or  offered  for  sale 
to  those  of  the  complaining  party. 

SEC.  8.  Any  person  guilty  of  unfair  competition,  as  de- 
fined in  the  preceding  section,  in  addition  to  the  civil  remedies 
to  which  he  may  be  subject,  shall  also  be  liable  criminally,  in 
case  of  conviction  for  the  same,  to  a  fine  of  not  exceeding  two 
thousand  dollars  or  imprisonment  not  exceeding  two  years,  or 
both,  in  the  discretion  of  the  court. 

SEC.  9.  No  action,  or  suit,  or  criminal  prosecution  shall  be 
maintained  under  the  provisions  of  this  Act  in  any  case  where 
the  violation  of  the  trade  mark  or  trade  name  or  the  unfair 


734  PHILIPPINE  ISLANDS 

competition  complained  of  has  been  in  any  unlawful  business, 
or  with  respect  to  any  article  trade  in  which  is  unlawful,  or  is 
against  public  policy,  or  in  any  case  where  the  trade  mark,  trade 
name,  or  the  indicia  of  origin,  ownership,  or  manufacture  have 
been  used  by  the  complaining  and  injured  party  for  the  purpose 
of  himself  deceiving  the  public  with  respect  to  the  character  of 
the  merchandise  sold  by  him  or  of  the  business  or  profession  or 
occupation  carried  on  by  him. 

SEC.  10.  The  use  of  a  trade  mark  or  trade  name  by  the 
assignee  of  the  original  manufacturer  or  dealer  who  first  used 
and  established  the  exclusive  right  to  use  such  trade  mark  or 
trade  name  in  his  business,  shall  be  lawful  and  shall  be  protected 
under  this  Act  if  the  fact  of  the  assignment  from  the  original 
owner  is  shown  in  association  with  the  trade  mark  or  trade 
name  wherever  used  by  the  assignee. 

SEC.  11.  The  owners  of  trade  marks  or  trade  names  domi- 
ciled in  the  Philippine  Islands,  or  the  United  States,  or  in  any 
foreign  country  which  by  treaty,  convention,  or  law  affords  sim- 
ilar privileges  to  the  citizens  of  the  United  States  and  of  the 
Philippine  Islands,  may  obtain  registration  of  such  trade  marks 
or  trade  names  by  complying  with  the  following  requirements : 

First.  By  causing  to  be  recorded  in  the  Division  of  Ar- 
chives, Patents,  Copyrights,  and  Trade  Marks  a  statement  speci- 
fying the  name,  domicile,  location,  and  citizenship  of  the  appli- 
cant; the  general  class  or  classes  of  merchandise  to  which  the 
trade  mark  claimed  has  been  appropriated ;  or  in  case  of  a  trade 
name  the  description  of  the  business,  profession,  or  occupation 
it  is  to  distinguish;  a  description  of  the  trade  mark  or  trade 
name  itself,  with  facsimiles  thereof,  and  a  statement  of  the 
mode  in  which  the  same  is  applied  and  affixed  to  goods,  or  is  to 
be  used  in  the  business,  profession  or  occupation,  and  the  length 
of  time  during  which  the  trade  mark  or  trade  name  has  been 
used. 

Second.  By  paying  into  the  Division  of  Archives,  Patents, 
Copyrights,  and  Trade  Marks  the  sum  of  twenty-five  dollars  in 
money  of  the  United  States  and  complying  with  such  regula- 
tions as  may  be  prescribed  by  the  chief  of  said  Division. 

SEC.  12.  The  application  prescribed  in  the  foregoing  sec- 
tion must  be  accompanied  by  a  written  declaration  verified  by 
the  person,  or  by  a  member  of  the  firm,  or  by  an  officer  of  the 
corporation  applying,  to  the  effect  that  such  party  has  at  the 
time  a  right  to  the  use  of  the  trade  mark  or  trade  name  sought 
to  be  registered,  and  that  no  other  person,  firm  or  corporation 
has  the  right  to  such  use,  either  in  the  identical  form  or  in  any 
such  near  resemblance  thereto  as  might  be  calculated  to  de- 


PHILIPPINE  ISLANDS  735 

ceive;  and  that  the  description  and  facsimiles  presented  for 
registry  truly  represent  the  trade  mark  sought  to  be  registered. 

SEC.  13.  The  time  of  the  receipt  of  any  such  application 
shall  be  noted  and  recorded.  But  no  alleged  trade  mark  or 
trade  name  shall  be  registered  which  is  merely  the  name,  qual- 
ity, or  description  of  the  merchandise  upon  which  it  is  to  be  used 
or  the  geographical  place  of  its  production  or  origin,  or  which 
is  identical  with  a  registered  or  known  trade  mark  owned  by 
another  and  appropriate  to  the  same  class  of  merchandise,  or 
which  so  nearly  resembles  another  person's  lawful  trade  mark 
or  trade  name  as  to  be  likely  to  cause  confusion  or  mistake  in 
the  mind  of  the  public,  or  to  deceive  purchasers.  In  an  appli- 
cation for  registration  the  Chief  of  the  Division  of  Archives, 
Patents,  Copyrights,  and  Trade  Marks  shall  decide  the  pre- 
sumptive lawfulness  of  claim  to  the  alleged  trade  mark. 

SEC.  14.  No  article  of  imported  merchandise  which  shall 
copy  or  simulate  the  name  of  any  domestic  manufacture,  or 
manufacturer  or  trader,  or  shall  copy  or  simulate  a  trade  mark 
or  trade  name  registered  in  accordance  with  the  provisions  of 
this  Act,  or  shall  bear  a  name  or  mark  calculated  to  induce  the 
public  to  believe  that  the  article  is  manufactured  in  the  Philip- 
pine Islands,  shall  be  admitted  to  entry  at  any  customhouse  of 
the  Philippine  Islands ;  and  in  order  to  aid  the  officers  of  the  cus- 
toms in  enforcing  this  prohibition,  any  domestic  manufacturer  or 
trader  may  require  his  name  and  residence  and  the  name  of  the 
locality  in  which  his  goods  are  manufactured,  and  a  copy  of  the 
certificate  of  registration  of  his  trade  mark  or  trade  name  issued 
in  accordance  with  the  provisions  of  this  Act,  to  be  recorded  in 
books  which  shall  be  kept  for  this  purpose  in  the  office  of  the 
Insular  Collector  of  Customs,  under  such  regulations  as  the 
Insular  Collector  of  Customs,  with  the  approval  of  the  Secre- 
tary of  Finance  and  Justice,  shall  prescribe,  and  may  furnish 
to  the  office  of  the  Insular  Collector  of  Customs  a  facsimile  of 
his  name,  the  name  of  the  locality  in  which  his  goods  are  manu- 
factured, and  of  his  registered  trade  mark  or  trade  name;  and 
thereupon  the  Insular  Collector  of  Customs  shall  cause  one  or 
more  copies  of  the  same  to  be  transmitted  to  each  collector  or 
other  proper  officer  of  customs:  Provided,  however,  That  this 
section  shall  not  be  construed  to  affect  rights  that  any  person 
may  have  acquired  by  virtue  of  having  registered  a  trade  mark 
under  the  laws  of  the  United  States. 

In  matters  arising  under  this  section  original  jurisdiction 
is  hereby  conferred  upon  the  Court  of  First  Instance,  and  ap- 
pellate jurisdiction  upon  the  Supreme  Court,  identical  with  the 
jurisdiction  conferred  upon  such  courts  by  section  twenty-six 


736  PHILIPPINE  ISLANDS 

of  the  Act  of  Congress  approved  August  fifth,  nineteen  hundred 
and  nine,  entitled  "An  Act  to  raise  revenue  for  the  Philippine 
Islands,  and  for  other  purposes." 

SEC.  15.  Certificates  of  registration  of  trade  marks  and 
trade  names  under  the  Spanish  sovereignty  in  these  Islands 
unannulled,  under  the  royal  decree  of  eighteen  hundred  and 
eighty-eight,  shall  be  conclusive  evidence  of  the  exclusive  right 
of  ownership  of  such  trade  marks  or  trade  names  in  respect  to 
the  goods  and  articles  of  merchandise  or  the  business,  profes- 
sion, or  occupation  to  which  they  by  the  terms  of  the  registra- 
tion apply. 

SEC.  16.  Certificates  of  registry  of  trade  marks  and  trade 
names  shall  be  issued  in  the  name  of  the  Insular  Government  of 
the  Philippine  Archipelago,  under  the  seal  of  the  Division  of 
Patents,  Copyrights,  and  Trade  Marks,  Executive  Bureau,  and 
shall  be  signed  by  the  chief  of  the  Division  of  Archives,  Pat- 
ents, Copyrights  and  Trade  Marks  and  a  record  thereof,  to- 
gether with  printed  copies  of  the  specific  trade  marks  and  trade 
names,  shall  be  kept  by  him  in  books  for  that  purpose.  Certi- 
fied copies  of  trade  marks  or  trade  names  and  of  statements 
and  declaration  filed  therewith,  and  original  certificates  of  reg- 
istry, shall  be  evidence  in  any  suit  in  which  such  trade  marks  or 
trade  names  shall  be  brought  into  controversy.  But  registra- 
tion of  trade  marks  and  trade  names  under  this  Act  shall  only 
be  prima  facie  evidence  of  the  exclusive  right  by  the  person 
securing  the  registration  to  use  the  same. 

SEC.  17.  A  certificate  of  registry  shall  remain  in  force  for 
thirty  years  from  its  date,  except  in  cases  where  the  trade  mark 
is  claimed  for,  and  applied  to,  articles  not  manufactured  in  this 
country,  and  in  which  it  receives  protection  under  the  laws  of  a 
foreign  country  for  a  shorter  period,  in  which  case  it  shall  cease 
to  have  any  force  in  this  country  by  virtue  of  this  Act  at  the 
time  that  such  trade  mark  ceases  to  be  exclusive  property  else- 
where. At  any  time  during  the  six  months  prior  to  the  expira- 
tion of  the  term  of  thirty  years,  such  registration  may  be  re- 
newed on  the  same  terms  and  for  a  like  period. 

SEC.  18.  Applicants  for  registration  under  this  Act  shall 
be  credited  for  any  fee  or  part  of  a  fee  heretofore  paid  into  the 
Division  of  Archives,  Patents,  Copyrights,  and  Trade  Marks 
with  intent  to  procure  protection  for  the  same  trade  mark  or 
trade  name. 

SEC.  19.  Any  person  who  shall  procure  the  registry  of  a 
trade  mark,  or  of  himself  as  the  owner  of  a  trade  mark  or  trade 
name,  or  an  entry  respecting  a  trade  mark  or  trade  name,  in 
the  Division  of  Archives,  Patents,  Copyrights,  and  Trade 


PHILIPPINE  ISLANDS  737 

Marks,  by  a  false  or  fraudulent  representation  or  declaration, 
orally  or  in  writing,  or  by  any  fraudulent  means,  or  any  person 
who  shall  aid  or  abet  such  fraudulent  procuring  of  registry, 
shall  be  liable  to  pay  any  damages  sustained  in  consequence 
thereof  to  the  injured  party ;  and  shall  further  be  liable  to  crim- 
inal prosecution,  and  upon  conviction  shall  be  punished  by  a 
fine  of  not  more  than  one  thousand  dollars  or  imprisonment  for 
not  more  than  one  year  and  one  day,  or  both,  in  the  discretion 
of  the  court. 

SEC.  20.  The  Chief  of  the  Division  of  Archives,  Patents, 
Copyrights,  and  Trade  Marks  is  authorized  to  make  rules  and 
regulations  and  prescribe  forms  for  the  transfer  of  the  right  to 
use  trade  marks  or  trade  names  and  for  recording  such  trans- 
fers in  his  office. 

SEC.  21.  The  citizens  and  residents  of  this  country  wishing 
the  protection  of  trade  marks  in  any  foreign  country,  the  laws 
of  which  require  registration  here  as  a  condition  precedent  to 
getting  such  protection  there,  may  register  their  trade  marks 
for  that  purpose,  as  is  above  allowed  to  foreigners,  and  have 
certificate  thereof  from  the  Division  of  Archives,  Patents,  Copy- 
rights and  Trade  Marks,  upon  payment  of  the  same  fee  as  that 
required  by  section  eleven. 

SEC.  22.  All  the  duties  appertaining  to  the  Bureau  of  Pat- 
ents, Copyrights,  and  Trade  Marks  are  hereby  devolved  upon 
the  Chief  of  the  Division  of  Archives,  Patents,  Copyrights,  and 
Trade  Marks. 

SEC.  23.  The  royal  decree  of  eighteen  hundred  and  eighty- 
eight  as  to  the  registration  of  trade  marks,  as  continued  in  force 
by  military  order,  is  hereby  repealed. 

SEC.  24.    This  Act  shall  take  effect  on  its  passage. 


POLAND 

LAW  OF  FEBRUARY  4,  1919 

ARTICLE  1.  All  marks  or  designations  of  every  kind  that 
serve  for  manufacturers  or  merchants  to  distinguish  their  prod- 
ucts from  those  of  other  manufacturers  or  merchants  shall  be 
considered  as  marks  of  manufacture  or  of  commerce. 

ART.  2.  The  use  of  marks  of  manufacture  or  of  commerce 
depends  upon  the  will  of  manufacturers  and  merchants ;  however, 
this  disposition  is  not  applicable  to  whatever  concerns  marks 
whereof  the  use  upon  certain  goods  is  rendered  obligatory  by 
special  laws. 

ART.  3.    There  may  not  be  used : 

1.  Marks  that  contain  inscriptions  or  designs  contrary  to 
law,  morality,  or  public  security ; 

2.  Marks  that  contain  inscriptions  or  designs  susceptible 
of  inducing  buyers  to  error. 

Marks  containing  the  reproduction  of  distinctions  of  honor 
that  a  manufacturer  or  merchant  has  obtained  for  certain  de- 
termined goods  may  be  employed  only  upon  merchandise  of  the 
same  class. 

ART.  4.  Every  manufacturer  or  merchant  that  wishes  to 
acquire  the  exclusive  right  to  make  use  of  a  mark  (Arts.  1  and 
2)  must  deposit  in  the  Patent  Office : 

1.  An  application  in  Polish  with  indication: 

a.  Of  the  name,  surname,  and  domicile  of  the  depositor 
and  of  his  attorney,  should  there  be  such ; 

b.  Of  the  corporate  name  and  of  the  kind  of  enterprise ; 

c.  Of  the  location  of  the  corporation ; 

d.  Of  the  products  (Art.  8)  for  which  the  mark  is  intended ; 

2.  an  exact  design  of  the  mark  when  it  does  not  consist  in 
a  simple  denomination,  and,  in  case  of  need,  a  description ; 

3.  The  State  Treasury  receipt  attesting  that  the  fee  has 
been  paid  (Art.  14). 

With  the  application  in  Polish  may  be  joined  a  list  of  the 
goods  and  a  description  in  a  foreign  language;  but  it  is  the 
Polish  language  that  shall  be  decisive. 

ART.  5.  Every  depositor  domiciled  abroad  must  act  with 
the  Patent  Office  through  the  intermediary  of  an  attorney,  and 
furnish  proof  that,  in  the  country  in  which  is  located  the  main 
office  of  his  house,  the  mark  is  protected. 

This  certificate  of  protection  shall  be  delivered — unless  in- 


POLAND  739 

ternational  conventions  prescribe  the  contrary — only  when  the 
mark  answers  to  the  requirements  of  the  present  law. 

ART.  6.  The  delivery  of  the  certificate  of  protection  for  a 
mark  shall  prevent  no  one  from  affixing  upon  his  goods  or  their 
wrappers  his  name  and  surname,  in  full  or  abbreviated,  his  es- 
cutcheon, his  signature  or  his  address,  or  indications  concerning 
the  kind,  the  time,  and  the  place  of  the  production  and  of  the 
sale  of  the  goods,  as  well  as  the  purpose,  the  price,  the  quantity, 
the  measure,  the  weight,  and  the  method  of  use  of  the  products 
in  commerce,  when  these  indications  are  not  of  a  nature  to  cause 
error  regarding  the  origin  of  the  merchandise. 

ART.  7.  The  inscriptions  in  marks  must  be  executed  in 
Latin  characters;  however,  foreign  marks  (Art.  5)  may  be  pro- 
tected in  Poland  under  the  form  in  which  they  are  protected 
abroad. 

ART.  8.  The  Minister  of  Commerce  and  of  Industry  shall 
establish  a  classification  for  products. 

Each  manufacturer  or  merchant  may  deposit  a  mark  only 
for  the  products  that  are  included  within  the  scope  of  his  enter- 
prise ;  however,  these  products  may  be  included  in  one  or  many 
classes. 

ART.  9.  There  shall  not  be  susceptible  of  protection, 
marks : 

1.  That  do  not  satisfy  the  requirements  of  Arts  3,  5,  7 
and  8; 

2.  That  are  not  sufficiently  distinguished  from  marks  for 
which  the  Patent  Office  has  granted  certificates  of  protection 
to  other  manufacturers  or  merchants  for  the  same  class  of  prod- 
ucts, unless  the  depositor  furnish  proof  that  the  original  pro- 
prietor of  the  mark  is  consenting ; 

3.  That  are  generally  employed  to  designate  the  products 
of  a  determined  kind; 

4.  That  consist  solely  of  separate  ciphers,  or  of  letters  or 
of  words  designating  the  kind,  the  time,  the  place  of  manufac- 
ture or  of  sale,  the  quality,  the  use,  the  price,  the  measure  or  the 
weight  of  the  goods ; 

5.  That  contain  the  arms  or  other  insignia  of  the  sover- 
eignty of  the  State  or  the  arms  of  a  locality  of  the  country,  of  a 
communal  association,  or  of  a  commune. 

In  addition,  applications  that  do  not  answer  to  the  require- 
ments of  Art.  4  shall  not  be  taken  into  consideration. 

No.  5,  above,  is  not  applicable  when  the  depositor  has  the 
right  of  using  the  arms  or  the  insignia  of  sovereignty  of  the 
State  and  desires  to  make  thereof  a  constituitive  part  of  his 
mark. 


740  POLAND 

ART.  10.  After  examination  and  assurance  that  the  appli- 
cation is  not  contrary  to  the  dispositions  of  Art.  9,  the  Patent 
Office  shall  invite  the  depositor  to  furnish  a  cliche  [electrotype] 
and  three  impressions  of  the  mark.  The  application  shall  then 
be  published  with  the  essential  details  in  the  Official  Journal. 
During  the  two  months  that  shall  follow  the  publication  and 
under  the  conditions  prescribed  by  Art.  9,  opposition  may  be 
made  in  writing  to  the  delivery  of  the  certificate  of  protection. 
The  exhibits  in  support  of  the  opposition  must  be  filed. 

At  the  same  time  as  the  opposition,  there  must  be  presented 
at  the  Patent  Office  a  receipt  from  the  State  Treasury  attesting 
the  payment  of  20  Polish  marks  for  the  expenses  of  opposition. 
If  opposition  has  not  been  lodged  within  two  months  or  if  the 
opposition  is  rejected,  there  shall  be  delivered  to  the  depositor 
a  certificate  of  protection  for  the  mark  (Art.  12).  The  certifi- 
cate of  protection  shall  be  signed  by  the  President  of  the  Patent 
Office,  after  having  been  provided  with  the  necessary  stamp.  If 
the  mark  does  not  answer  to  the  prescriptions  of  Art.  9  the 
Patent  Office  shall  refuse  to  deliver  the  certificate  of  protection 
and,  at  the  same  time,  shall  advise  the  applicant  regarding  the 
reasons  for  the  refusal. 

ART.  11.  The  depositor  that  is  not  satisfied  with  the  de- 
cision rejecting  his  application,  according  to  Art.  10,  and  the 
opposer  that  is  not  satisfied  with  the  decision  granting  the  cer- 
tificate of  protection,  may  have  recourse  to  an  appeal,  within  the 
two  months  that  follow  the  notification  of  the  decision,  to  the 
Appellate  Section  of  the  Patent  Office,  on  producing  a  receipt 
from  the  State  Treasury  that  attests  the  payment  of  the  appeal 
fee  of  30  Polish  marks. 

ART.  12.  The  delivery  of  the  certificate  of  protection  shall 
confer  upon  the  manufacturer  or  the  merchant  the  exclusive 
right  to  make  use  of  the  mark,  to  affix  it  upon  the  goods  desig- 
nated in  the  certificate  of  protection,  upon  goods  of  the  same 
kind,  or  upon  the  wrappers  or  receptacles  in  which  the  goods  are 
contained,  the  same  as  the  right  to  make  use  of  the  mark  for 
commercial  announcements,  prices-current,  and  printed  matter. 

ART.  13.  The  certificate  delivered  for  a  mark  that  has 
been  deposited  in  one  color  and  in  one  dimension  shall  confer 
the  exclusive  right  to  make  use  of  this  mark  in  all  colors  and 
dimensions. 

ART.  14.  The  certificate  of  protection  for  a  mark  is  deliv- 
ered for  a  duration  of  ten  years  counting  from  the  signature 
(Art.  10).  The  fee  for  the  deposit  of  the  mark  and  for  the  first 
period  of  ten  years  is  50  Polish  marks ;  in  addition,  the  deposi- 
tor must  pay  30  Polish  marks  for  each  of  the  classes  of  mer- 


POLAND  741 

chandise  designated  in  the  application.  Prior  to  the  expiration 
of  the  term  of  protection  of  ten  years,  the  certificates  may  be 
prolonged  for  new  periods  of  ten  years,  on  payment  of  a  fee  of 
50  Polish  marks  for  each  period.  Payments  must  be  made  at 
the  State  Treasury,  and  the  receipts  shall  be  presented  at  the 
Patent  Office. 

ART.  15.  The  certificate  shall  be  delivered  to  the  person 
that  has  presented  his  application  first,  even  when,  during  the 
course  of  procedure,  a  demand  shall  be  presented  by  other  per- 
sons for  the  same  mark. 

Between  two  applications  presented  the  same  day,  the  first 
shall  be  that  which  bears  the  lowest  number  in  the  Eegister  of 
Applications  of  the  Patent  Office. 

ART.  16.  There  shall  be  published  in  the  Official  Journal 
the  deposit  of  a  mark  with  the  essential  details  of  the  applica- 
tion (Art.  4,  Nos  1  and  2),  the  delivery  of  the  certificate  of  pro- 
tection for  the  mark,  with  the  same  details  (Art.  4,  Nos.  1  and 
2),  the  prolongation  (Art.  14),  and  the  expiration  of  its  validity 
(Art.  190). 

ART.  17.  The  delivery  of  a  certificate  of  protection  shall 
prevent  no  one  from  bringing  before  the  tribunal  the  question 
of  knowing  whether  the  possessor  of  the  certificate  has  the  ex- 
clusive right  to  employ  the  mark. 

Action  may  likewise  be  based  upon  any  of  the  reasons  that, 
on  examination  of  the  application,  might  justify  the  refusal  of 
the  certificate  of  protection. 

ART.  18.  The  right  to  a  mark  may  be  transferred  in  whole 
or  in  part  to  a  purchaser  or  lessor  of  the  industrial  or  commer- 
cial establishment,  on  condition  that,  within  six  months  (count- 
ing from  the  day  of  the  sale  or  of  the  leasing  contract),  proof 
be  deposited  in  the  Patent  Office  to  the  effect  that  the  former 
proprietor  agrees. 

For  every  inscription  of  the  certificate  of  protection  in  the 
name  of  a  new  proprietor,  there  shall  be  collected  a  fee  of  20 
Polish  marks.  The  fee  is  payable  at  the  State  Treasury  and 
the  receipt  shall  be  joined  to  the  petition  sent  to  the  Patent 
Office. 

ART.  19.    The  protection  of  a  mark  shall  expire : 

1.  Through  written  renunciation  of  the  proprietor  or  by 
dissolution  of  the  enterprise; 

2.  Through  default  of  renewal  of  the  certificate  of  pro- 
tection within  the  term  prescribed  (Art.  14) ; 

3.  When  the  Patent  Office  is  not  notified  within  six  months 
that  the  mark  has  been  transferred  to  another  proprietor  (Art. 
18); 


742  POLAND 

4.  When  the  tribunal  pronounces  loss  of  the  right  to  use 
the  mark  (Art.  17). 

ART.  20.  In  the  cases  provided  for  in  Nos.  1,  2  and  3  of 
Art.  19,  the  exclusive  right  of  making  use  of  the  mark  may  be 
again  recognized  only  after  the  expiration  of  a  term  of  two 
years,  counting  from  the  day  on  which  the  extinction  of  the  pro- 
tection has  been  published  (Art.  16). 

ART.  21.  Every  violation  of  the  right  to  the  exclusive  use 
of  a  mark  shall  entail  the  responsibility  provided  for  by  the 
dispositions  of  the  Penal  Code,  without  prejudice  to  the  obliga- 
tion to  make  reimbursement  for  damages  and  losses  caused. 

ART.  22.  The  Patent  Office  shall  keep  a  special  Register 
and  shall  preserve  a  collection  of  marks. 

This  collection  may  be  shown  to  any  person  that  makes  ap- 
plication therefor.  The  Register,  which  all  persons  interested 
may  consult,  must  contain  the  number  and  the  essential  details 
of  the  certificate  of  protection. 

ART.  23.  Certificates  of  protection  for  marks  that  have 
been  deposited  by  virtue  of  laws  in  force  up  to  the  present  in 
Poland  or  in  certain  parts  of  Poland,  shall  remain  valid,  under 
reservation  of  the  rights  of  third  parties,  on  condition  that  the 
proprietors  deposit  them  at  the  Patent  Office  within  the  six 
months  that  follow  the  entry  into  force  of  the  present  law,  by 
joining  thereto  a  petition  (Art.  4,  No.  1),  a  cliche  with  three  im- 
pressions of  the  mark  (Art.  10)  and  the  receipt  of  the  State 
Treasury  attesting  the  payment  of  the  fee  (Art.  14). 

The  Ministry  of  Industry  and  of  Commerce  shall  have  the 
authority  to  extend  the  above  delay. 

Counting  from  the  delivery  of  the  certificate  of  protection 
in  Poland,  the  marks  in  question  shall  be  subject  to  the  disposi- 
tions of  the  present  law.  In  accordance  with  Art.  14,  they  shall 
be  protected  for  ten  years,  counting  from  the  day  on  which  the 
certificate  of  protection  in  Poland  has  been  signed. 

ART.  24.  The  present  law  shall  become  of  effect  the  day 
on  which  it  shall  be  published  in  the  Bulletin  of  the  Laws  of 
Poland.* 


*  Published  in  the  Bulletin  of  the  Laws  of  Poland  (Dziennik  Prdw  Panseva 
Polskieg),  No.  13  of  February  7,  1919. 


PORTO  RICO 

POLITICAL  CODE  APPROVED  MARCH  1,  1902 

SECTION  1.  This  Act  shall  be  known  as  the  Political  Code 
of  Porto  Rico. 

•  •  •  •  •  *  •  •  •  [• 

CHAPTER  V 
TRADE  MARKS 

SECTION  213.  That  the  owners  of  trade  marks  or  commer- 
cial designs  used  in  commerce  in  Porto  Rico,  provided  such  own- 
ers shall  be  domiciled  in  Porto  Rico  or  the  United  States  or  lo- 
cated in  any  foreign  country  which  affords  similar  privileges  to 
citizens  of  the  United  States  or  Porto  Rico,  may  obtain  registra- 
tion of  such  trade  marks  or  commercial  designs  by  causing  to  be 
filed  in  the  office  of  the  Secretary  of  Porto  Rico  a  statement  speci- 
fying name,  principal  place  of  business  and  citizenship  of  the 
party  applying ;  the  class  of  merchandise,  and  the  particular  de- 
scription of  goods  comprised  in  such  class  to  which  the  particular 
trade  mark  or  design  has  been  appropriated;  a  description  of 
the  trade  mark  or  design  itself,  with  fac-similes  thereof,  and  a 
statement  of  the  mode  in  which  the  same  is  applied  and  affixed  to 
goods,  and  the  length  of  time  during  which  the  trade  mark  or 
design  has  been  used;  by  paying  the  required  registration  fee 
and  complying  with  such  regulations  as  may  be  prescribed  by  the 
Secretary  of  Porto  Rico. 

SECTION  214.  That  the  application  prescribed  in  foregoing 
Section  must,  in  order  to  create  any  right  whatever  in  favor  of 
the  party  filing  it,  be  accompanied  by  a  written  declaration  veri- 
fied by  the  person,  or  by  a  member  of  a  firm  or  by  an  officer  of 
a  corporation  applying,  to  the  effect  that  such  party  has  at  the 
time  a  right  to  the  use  of  the  trade  mark  or  design  sought  to  be 
registered,  and  that  no  other  person,  firm  or  corporation  has  the 
right  to  such  use,  either  in  the  identical  form  or  in  any  such  near 
resemblance  thereto  as  might  be  calculated  to  deceive ;  and  that 
the  description  and  fac-similes  presented  for  registry  truly  rep- 
resent the  trade  mark  or  design  sought  to  be  registered. 

SECTION  215.  That  the  time  of  receipt  of  any  such  applica- 
tion shall  be  noted  and  recorded.  But  no  alleged  trade  mark  or 
design  shall  be  registered  unless  the  same  appear  to  be  lawfully 
used  as  such  by  the  applicant ;  nor  which  is  merely  the  name  of 
the  applicant ;  nor  which  is  identical  with  a  registered  or  known 


744  POETO  RICO 

trade  mark  or  design  owned  by  another  and  appropriated  to  the 
same  class  of  merchandise,  or  which  so  nearly  resembles  the  law- 
ful trade  mark  or  design  of  another  as  to  be  likely  to  cause  con- 
fusion or  mistake  in  the  mind  of  the  public  or  to  deceive  pur- 
chasers. In  an  application  for  registration  the  Secretary  of 
Porto  Eico  shall  decide  the  presumptive  lawfulness  of  claim  to 
the  alleged  trade  mark  or  design. 

SECTION  216.  That  certificates  of  registry  shall  be  issued 
in  the  name  of  the  people  of  Porto  Eico,  and  signed  by  the  Secre- 
tary of  Porto  Eico,  under  seal,  and  a  record  thereof,  together 
with  copies  of  the  specifications,  shall  be  kept  in  books  for  that 
purpose.  Copies  of  trade  marks  and  designs  and  statements 
and  declarations  filed  therewith,  and  certificates  of  registry  so 
signed  and  sealed  shall  be  evidence  in  any  suit  in  which  such 
trade  marks  or  designs  shall  be  brought  into  controversy. 

SECTION  217.  That  a  certificate  of  registry  shall  remain  in 
force  for  twenty  years  from  its  date,  except  in  cases  where  the 
trade  mark  or  design  is  claimed  for  and  applied  to  articles  not 
manufactured  in  Porto  Eico,  and  in  which  it  receives  protection 
under  the  laws  where  manufactured  for  a  shorter  period,  in 
which  case  it  shall  cease  to  have  any  force  in  Porto  Eico  by  vir- 
tue of  this  Act  at  the  time  that  such  trade  mark  or  design  ceases 
to  be  exclusive  property  elsewhere.  At  any  time  during  six 
months  prior  to  the  expiration  of  the  period  of  twenty  years 
such  registration  may  be  renewed  on  the  same  terms  and  for  a 
like  period. 

SECTION  218.  That  registration  of  a  trade  mark  or  design 
shall  be  prima  facie  evidence  of  ownership.  Any  person  who 
shall  reproduce,  counterfeit,  copy,  or  colorably  imitate  any  trade 
mark  or  design  registered  under  this  Act  and  affix  the  same  to 
merchandise  of  substantially  the  same  descriptive  properties  as 
those  described  in  the  registration,  shall  be  liable  to  an  action 
for  damages  for  the  wrongful  use  of  such  trade  mark  or  design 
at  the  suit  of  the  owner  thereof ;  and  the  party  aggrieved  shall 
also  have  his  remedy  in  equity  to  enjoin  the  wrongful  use  of  such 
trade  mark  or  design. 

SECTION  219.  That  no  action  or  suit  shall  be  maintained 
under  the  provisions  of  this  Act  in  any  case  when  the  trade  mark 
or  design  is  used  in  an  unlawful  business,  or  has  been  used  with 
the  design  of  deceiving  the  public  in  the  purchase  of  merchandise, 
or  under  any  certificate  of  registry  fraudulently  obtained. 

SECTION  220.  That  any  person  who  shall  procure  the  regis- 
try of  a  trade  mark  or  design,  or  of  himself  as  the  owner  of  a 
trade  mark  or  design,  or  any  entry  representing  a  trade  mark 
or  design,  in  the  office  of  the  Secretary  of  Porto  Eico,  by  a  false 


PORTO  RICO  745 

or  fraudulent  representation  or  declaration,  orally  or  in  writing 
or  by  any  fraudulent  means,  shall  be  liable  to  pay  any  damages 
sustained  in  consequence  thereof  to  the  injured  party. 

SECTION  221.  That  the  Secretary  of  Porto  Rico  is  author- 
ized to  make  rules  and  regulations  governing  registration  under 
this  Act,  and  for  the  transfer  of  the  right  to  use  trade  marks  and 
commercial  designs,  and  shall  collect  the  sum  of  ten  dollars  in 
addition  to  the  fee  for  recording  as  provided  by  law  for  each 
trade  mark  or  design. 

SECTION  222.  That  all  laws,  decrees,  or  military  orders,  or 
parts  thereof  in  conflict  herewith,  are  hereby  repealed. 


PENAL  CODE  APPROVED  MARCH  1,  1902* 


CHAPTER  XI 

CRIMES  AGAINST  OTHER  CLASSES  OF  PROPERTY 
SECTION  311.  Every  person  who  wilfully  reproduces, 
copies,  imitates,  forges,  or  counterfeits,  or  procures  to  be  repro- 
duced, copied,  imitated,  forged,  or  counterfeited,  any  trade  mark 
usually  affixed  by  any  person  to  his  goods,  which  has  been  duly 
recorded  in  the  office  of  the  Secreetary  of  Porto  Rico,  or  with 
the  Commissioner  of  Patents  in  the  United  States  Patent  Office, 
or  any  label  or  brand,  composed  in  whole  or  in  part  of  a  repro- 
duction of  such  trade  mark,  who  affixes  the  same  to  goods  of 
essentially  the  same  descriptive  properties  and  qualities  as  those 
referred  to  in  the  registration  of  such  trade  mark,  with  intent  to 
pass  off,  or  to  assist  other  persons  to  pass  off,  any  goods  to 
which  such  reproduced,  copied,  imitated,  forged,  or  counter- 
feited trade  mark,  or  label,  or  brand  is  affixed,  or  intended  to  be 
affixed,  as  the  goods  of  the  person,  firm,  company,  or  corporation 
owning  the  said  trade  mark,  is  guilty  of  a  misdemeanor. 

SECTION  312.  Every  person  who  sells  or  keeps  for  sale,  or 
manufactures  or  prepares,  for  the  purpose  of  sale,  any  goods 
upon,  or  to  which  any  reproduced,  copied,  imitated,  forged,  or 
counterfeited  trade  mark  or  label  or  brand  composed  in  whole  or 
in  part  of  such  reproduced,  copied,  imitated,  forged,  or  counter- 
feited trade  mark  has  been  fixed,  after  such  trade  mark  has  been 
recorded  in  the  office  of  the  Secretary  of  Porto  Rico,  or  with 
the  Commissioner  of  Patents  in  the  United  States  Patent  Office, 
intending  to  represent  such  goods  as  the  genuine  goods  of  the 

*  Matter  not  relating  to  trade  marks  omitted. 


746  PORTO  RICO 

person,  firm,  company,  or  corporation,  owning  the  said  trade 
mark,  knowing  the  same  to  be  reproduced,  copied,  imitated, 
forged  or  counterfeited,  is  guilty  of  a  misdemeanor. 

SECTION  313.  The  phrases  "forged  trade  mark,"  and 
"counterfeited  trade  mark,"  or  their  equivalents,  as  used  in  this 
Chapter,  include  every  alteration  or  imitation  of  any  trade  mark 
so  resembling  the  original  as  to  be  likely  to  deceive. 

SECTION  314.  The  phrase,  "trade  mark,"  as  used  in  the 
three  preceding  sections,  includes  every  description  of  word,  let- 
ter, device,  emblem,  stamp,  imprint,  brand,  printed  ticket,  label, 
wrapper,  usually  affixed  by  any  mechanic,  manufacturer,  drug- 
gist, merchant  or  tradesman,  to  denote  any  goods  to  be  goods 
imported,  manufactured,  produced,  compounded,  or  sold  by  him, 
other  than  any  name,  word  or  expression  generally  denoting  any 
goods  to  be  of  some  particular  class  or  description. 

SECTION  315.  Every  person  who  has  in  his  possession,  or 
who  uses  any  cask,  bottle,  vessel,  case,  cover,  label,  brand,  or 
other  thing  bearing,  or  having  in  any  way  connected  with  it  the 
trade  mark  of  another,  which  has  been  duly  recorded  in  the  Office 
of  the  Secretary  of  Porto  Rico,  or  with  the  Commissioner  of 
Patents  in  the  United  States  Patent  Office,  or  the  trade  name  of 
another,  for  the  purpose  of  disposing  of  any  article  other  than 
that  which  such  cask,  bottle,  vessel,  case,  cover,  label,  brand,  or 
other  thing  originally  contained,  or  is  connected  with  by  the 
owner  of  such  trade  mark  or  trade  name,  with  intent  to  deceive 
or  defraud,  is  guilty  of  a  misdemeanor. 

SECTION  316.  Every  person  who  wilfully  sells  or  trafficks  in 
any  cask,  keg,  bottle,  vessel,  siphon,  can,  case  or  other  package 
bearing  the  duly  filed  trade  mark  or  name  of  another,  printed, 
branded,  stamped,  engraved,  etched,  blown,  or  otherwise  at- 
tached or  produced  thereon,  or  refills  any  such  cask,  keg,  bottle, 
vessel,  siphon,  can,  case,  or  other  package  with  intent  to  defraud 
the  owner  thereof,  without  the  consent  of  the  owner  thereof,  or 
unless  the  same  shall  have  been  purchased  from  the  owner  there- 
of, is  guilty  of  a  misdemeanor. 

SECTION  317.  Every  person  who  shall  wilfully  deface, 
erase,  obliterate,  cover  up,  or  otherwise  remove,  destroy,  or 
conceal  the  duly  filed  trade  mark  or  name  of  another,  printed, 
branded,  stamped,  engraved,  etched,  blown,  impressed,  or  other- 
wise attached  to,  or  produced  upon  any  cask,  keg,  bottle,  vessel, 
siphon,  can,  case,  or  other  package,  for  the  purpose  of  selling  or 
trafficking  in  such  cask,  keg,  bottle,  vessel,  siphon,  can,  case  or 
other  package,  or  refilling  such  cask,  keg,  bottle,  vessel,  siphon, 
can,  case,  or  other  package,  with  intent  to  defraud  the  owner 
thereof,  without  the  consent  of  the  owner,  or  unless  the  same 


PORTO  RICO  747 

shall  have  been  purchased  from  the  owner  is  guilty  of  a  mis- 
demeanor. 

SECTION  318.  Every  person  who  defaces  or  obliterates  the 
marks  upon  wrecked  property,  or  in  any  manner  disguises  the 
appearancee  thereof,  with  intent  to  prevent  the  owner  from  dis- 
covering its  identity,  or  who  destroys  or  suppresses  any  invoice, 
bill  of  lading,  or  other  document  tending  to  show  the  ownership, 
is  guilty  of  a  misdemeanor. 

SECTION  319.  Every  person  who  cuts  out,  alters,  or  defaces 
any  mark  made  upon  any  log,  lumber,  or  wood,  or  puts  a  false 
mark  thereon  with  intent  to  prevent  the  owner  from  discovering 
its  identity,  is  guilty  of  a  misdemeanor. 

SECTION  320.  Every  person  who  marks  or  brands,  alters 
or  defaces,  the  mark  or  brand  of  any  horse,  mare,  colt,  jack,  mule, 
bull,  ox,  steer,  cow,  calf,  sheep,  goat,  hog,  shoat,  or  pig,  belonging 
to  another,  with  intent  thereby  to  steal  the  same,  or  to  prevent 
identification  thereof  by  the  true  owner,  is  punishable  by  impris- 
onment in  the  penitentiary  for  not  less  than  one  nor  more  than 
five  years. 


PORTUGAL 

LAW  OF  JUNE  4,  1883 
CHAPTER  I 

GENERAL  PROVISIONS 

ARTICLE  1.  Any  industrial  or  merchant  shall  have  the  right 
to  distinguish  the  products  of  his  industry  or  the  objects  of  his 
commerce  by  using  special  and  distinctive  marks,  and  also  that 
of  having  them  stamped  by  the  State. 

ART.  2.  In  order  that  these  rights  be  guaranteed  to  indus- 
trials and  merchants,  in  accordance  with  the  terms  of  the  pres- 
ent law,  it  is,  however,  indispensable  that  they  shall  have  sub- 
jected themselves  to  the  fulfillment  of  the  conditions  and  for- 
malities that  it  prescribes. 

ART.  3.  The  use  of  marks  of  manufacture  and  of  com- 
merce, and  the  application  of  the  stampings  of  the  State,  shall 
only  be  obligatory  in  cases  specially  designated  in  the  laws  and 
regulations  in  force. 

CHAPTER  II 

MARKS  OF  MANUFACTURE  AND  OF  COMMERCE 
ART.  4.  There  shall  be  considered  as  marks  of  manufac- 
ture or  of  commerce,  all  signs  that  serve  for  distinguishing  the 
products  of  an  industry  or  the  objects  of  commerce;  and,  as 
such,  there  may  be  adopted  any  special  denominations  or  desig- 
nations, stamps,  emblems,  seals,  signs,  borders,  designs,  reliefs, 
letters,  devices,  and,  in  their  distinctive  form,  individual  signa- 
tures or  firms. 

SOLE  PARAGRAPH.  There  may  not,  however,  be  considered 
as  marks  of  manufacture  or  of  commerce,  simple  words,  letters 
or  ciphers  written  withotit  distinctive  form,  and  there  shall  not 
be  accepted  marks  that  contain  words  or  designs  offensive  to 
morality  and  good  conduct. 

ART.  5.  In  the  adoption  of  marks  of  manufacture  or  of 
commerce  there  shall  be  observed  the  following  precepts: 

1)  No  industrial  or  merchant  may  avail  himself  of  a  mark 
already  used  by  another,  or  with  which  that  of  another  may  be 
confused ; 

2)  No  one  shall  be  permitted  to  include  in  the  mark  of  the 
products  of  his  industry  the  indication  df  a  country,  of  a  region, 
or  of  a  locality,  in  which  they  have  no^been  produced,  unless, 
through  traditional  usage,  there  is  giveVi  to  the  products  of  a 


Patent  and  Trade  Mark  Review 

VOL.  21        APRIL,  1923        No.  7 
IN  TWO  SECTIONS— SECTION  2 


PORTUGAL 
LAW  OF  MAY  21,  1896* 

TITLE  IV 

INDUSTRIAL  AND  TRADE  MARKS 

CHAPTER  I 

MARKS 

ARTICLE  58.  Any  industrial,  agrarian,  or  merchant  that 
shall  have  satisfied  the  requirements;  of  the  present  decree  shall 
have  the  right  of  employing  and  having  registered  the  industrial 
or  commercial  marks  of  his  products,  and  may  also  have  these 
marks  stamped  by  the  State. 

SOLE  PARAGRAPH.  The  use  of  industrial  or  commercial 
marks  is  optional,  save  for  objects  for  which  the  mark  shall 
have  been  declared  obligatory  by  a  law  or  a  special  regulation. 

ART.  59.  The  use  of  industrial  and  commercial  marks  is 
authorized  even  when  these  marks  shall  not  have  been  regis- 
tered, when  they  do  not  injure  the  rights  of  those  that  have 
had  legal  registrations  effected. 

ART.  60.  There  shall  be  considered  as  an  industrial  or 
commercial  mark  any  sign  serving  to  distinguish  the  products 
of  an  industry  or  the  objects  of  a  line  of  business. 

There  may  be  adopted  to  this  effect : 

1)  Industrial  or  commercial  designations  and  firms; 

2)  The  full  or  abbreviated  names  of  industrials  or  mer- 
chants, and  the  facsimiles  of  their  signatures; 

3)  Fancy  or  specific  designations; 

4)  Emblems,  seals,  stamps,  devices,  stampings,  imprints, 
vignettes,  figures,  designs,  and  reliefs ; 

5)  Letters  and  ciphers  combined  in  a  distinctive  manner; 

6)  The  name  of  an  agricultural  or  urban  property  belong- 
ing to  the  industrial  or  merchant. 

*Matter  not  relating  to  trade  marks  is  omitted. 

748 


PORTUGAL  749 

SOLE  PARAGRAPH.  These  signs  may  be  typed,  lithographed, 
imprinted,  modeled,  engraved,  inlaid,  woven,  worked  in  the 
material,  pyrographed,  reproduced  or  imprinted  in  any  manner 
whatsoever  upon  stoppers,  labels,  capsules  and  envelopes,  upon 
the  objects  themselves,  upon  their  partial  or  collective  wrap- 
pings. 

ART.  61.  In  order  that  a  mark  may  be  considered  as  an 
exclusive  property  it  is  essential  that  it  shall  have  been  regis- 
tered. 

ART.  62.  The  document  through  which  the  industrial  or 
merchant  establishes  his  right  of  ownership  to  the  mark  is  the 
Certificate  of  Registration  delivered  by  the  Secretariat  of  State 
of  Public  Works,  of  Commerce,  and  of  Industry. 

SOLE  PARAGRAPH.  The  right  of  ownership  to  a  mark  is 
limited  to  the  class  of  objects  for  which  it  has  been  registered. 

ART.  63.  The  registration  of  a  mark  does  not  imply  the 
acknowledgment  by  the  State  of  the  fact  that  the  mark  is  new 
or  different  from  another  previously  registered  mark. 

ART.  64.  The  ownership  of  the  mark  registered  is  guaran- 
teed for  the  terms  hereafter  stipulated. 

ART.  65.  The  proprietor  of  the  mark  registered,  and  he 
alone,  shall  have  the  right  of  adding  to  his  mark  the  mention : 
Marca  repistrada  (Registered  mark),  or  the  initials  M.  R. 

ART.  66.  Marks  may  be  registered  in  favor  of  a  person, 
of  a  firm,  of  a  joint-stock  company,  of  a  corporation,  or  of  an 
association. 

ART.  67.  The  duration  of  the  exclusive  privilege  resulting 
from  the  fact  of  registration  is  ten  years. 

SOLE  PARAGRAPH.  This  registration  may  be  renewed  in- 
definitely by  periods  of  ten  years  on  application  for  renewal 
made  during  the  last  year. 

ART.  68.  The  marks  of  objects  fabricated  in  the  establish- 
ments of  the  State  shall  be  considered  in  all  respects  as  regis- 
tered marks. 

ART.  69.  A  registration  may  have  reference  to  but  a  single 
mark. 

PARAGRAPH  1.  There  shall  not  be  considered  as  different 
those  marks  in  which  the  colors  alone  differ. 

PARAGRAPH  2.  There  shall  be  considered  as  different,  marks 
of  different  form,  even  when  they  shall  belong  to  the  same  prop- 
rietor and  when  they  are  affixed  to  products  of  the  same  nature. 

PARAGRAPH  3.  There  shall  be  considered  as  different,  marks 
of  like  form  that  are  affixed  to  different  products. 


750  PORTUGAL 

ART.  70.  One  example  of  each  of  the  marks  registered 
shall  be  placed  at  the  disposition  of  the  public  in  the  Archives 
of  Marks  and  Patents. 

CHAPTER  II 

REGISTRATION 

ART.  71.  Applications  intended  for  the  registration  of 
marks  must  be  made  by  means  of  petitions  drawn  up  in  Portu- 
guese and  accompanied:  by  three  examples  of  the  mark;  by  a 
reduction  or  photographic  copy  of  this  latter ;  by  a  description 
in  Portuguese  of  the  same  mark,  with  indication  of  the  objects 
for  which  it  is  intended,  as  well  as  other  documents  that  may 
be  necessary. 

PARAGRAPH  1.  When  it  shall  be  a  question  of  a  pyro- 
graphed  mark,  the  examples  to  be  deposited  shall  be  photo- 
graphic copies. 

PARAGRAPH  2.  For  woven  marks,  there  shall  be  deposited 
pieces  of  the  material  under  the  same  conditions  that  marks 
upon  paper  are  deposited. 

PARAGRAPH  3.  For  other  marks,  it  is  permissible  to  deposit 
a  photographic  copy  or  design  of  the  mark. 

PARAGRAPH  4.  When  the  copy  of  the  mark  has  not  been 
executed  in  the  natural  size,  this  circumstance  must  be  men- 
tioned, or  there  must  be  indicated  the  true  dimensions  of  the 
mark. 

ART.  72.  One  of  the  examples  of  the  mark  deposited  shall 
be  preserved,  duly  classified,  in  the  Division  of  Industry.  The 
second  example  shall  be  preserved  in  the  Archives  of  Marks 
and  Patents.  The  third  shall  be  pasted  upon  the  certificate  of 
registration  delivered  to  the  applicant. 

ART.  73.  The  fees  to  be  paid  are  the  following:  for  the 
registration  of  the  mark,  2,500  reis ;  for  its  renewal,  2,000  reis. 

ART.  74.  Applications  for  registration,  as  well  as  applica- 
tions for  renewal,  may  be  made  directly  by  those  interested  or 
their  attorneys  in  the  Division  of  Industry;  or  sent  by  regis- 
tered letter,  at  the  same  time  as  a  postal  money  order  for  the 
amount  to  be  paid,  in  addition,  500  reis  for  the  expenses  of 
correspondence. 

ART.  75.  Applications  for  registration  or  for  renewal,  as 
well  as  the  description  of  the  mark  and  all  other  documents, 
may  be  drawn  up  in  the  French  language,  on  condition  that 
there  be  sent  at  the  same  time  the  additional  sum  of  500  reis 
per  page  for  the  expenses  of  translation. 


PORTUGAL  751 

ART.  76.  Industrial  or  commercial  marks  of  Portuguese 
residing  abroad  shall  be  registered  under  the  same  conditions 
as  those  of  the  marks  of  Portuguese  or  foreigners  residing  in 
Portugal,  when  they  shall  be  deposited  by  those  interested  or 
their  attorneys  at  the  competent  Division,  or  when  they  shall 
be  addressed  to  this  latter  by  registered  letter. 

SOLE  PARAGRAPH.  The  marks  of  foreigners  residing  with 
out  Portugal  shall  be  registered  under  the  same  conditions  as 
those  of  Portuguese,  if  diplomatic  conventions  or  the  domestic 
legislation  of  the  country  to  which  they  belong,  or  in  which 
they  possess  industrial  or  commercial  establishments,  establish 
reciprocity  in  favor  of  Portuguese  subjects. 

ART.  77.  The  registration  of  international  marks  shall  be 
effected  in  conformity  with  the  dispositions  of  the  Arrangement 
concluded  at  Madrid  on  April  14,  1891,  and  ratified  on  October 
11,  1893. 

ART.  78.  Applications  concerning  the  registration  of  marks 
shall  be  published  in  the  Diario  do  Governo  and  in  the  Boletim 
da  Propriedade  Industrial. 

SOLE  PARAGRAPH.  When  the  party  interested  shall  furnish 
the  typographic  cliche  of  the  mark,  which  shall  be  afterwards 
returned  to  him,  the  reproductcion  of  the  mark  shall  appear  in 
the  Boletim  together  with  the  description  of  this  latter. 

ART.  79.  The  right  of  priority  resulting  from  registration 
shall  be  computed  by  counting  from  the  day  and  the  hour  at 
which  the  application  reached  the  Division.  For  applications 
sent  by  post  there  shall  be  observed  the  order  of  preference 
hereafter  indicated : 

1)  Applications  of  nationals  and  foreigners  domiciled  in 
Portugal,  or  Portuguese  domiciled  abroad,  or  foreigners  be- 
longing to  the  countries  of  the  Union  for  the  Protection  of 
Industrial  Property; 

2)  Foreigners  of  other  countries. 

PARAGRAPH  1.  In  each  of  these  two  groups  when  two  or 
several  analogous  applications,  sent  by  post,  shall  arrive  at 
the  same  time,  there  shall  be  considered  as  the  oldest  that  which 
shall  have  been  sent  from  the  locality  from  which  postal  cor- 
respondence with  Lisbon  requires  the  longest  tune. 

PARAGRAPH  2.  If  the  rule  established  in  Paragraph  1  does 
not  suffice  for  determining  the  preference,  there  shall  be  con- 
sidered as  the  oldest  the  application  that  shall  have  been  drawn 
up  in  Portuguese,  while  favoring,  under  like  circumstances, 
that  which  has  come  the  greatest  distance. 


752  PORTUGAL 

ART.  80.  Eegistrations  shall  be  made  by  classes,  in  accord- 
ance with  the  nature  of  the  products. 

SOLE  PARAGRAPH.  Each  registration  shall  bear  two  serial 
numbers :  one  for  class,  the  other  general. 

CHAPTER  III 

AFFIXING  OF  THE  STAMP  OF  THE  STATE 

ART.  81.  The  proprietor  or  the  proprietors  of  a  mark  that 
shall  desire  to  add  to  the  mark  the  stamp  of  the  State,  whether 
imprinted,  struck  with  a  die,  pyrographed,  shall  present  with 
their  application  the  labels,  wrappers,  or  objects  of  which  it  is 
a  question,  paying  for  this  service  the  sum  that  shall  be  fixed 
through  regulation. 

ABT.  82.  The  stamp  establishes  a  legal  presumption  in 
favor  of  the  authenticity  of  the  marks  to  which  it  is  affixed. 

ART.  83.  The  affixing  of  the  stamp  must  be  done  by  the 
Division  of  Industry,  or  at  the  place  that  shall  be  designated 
for  this  purpose. 

ART.  84.  An  application  intended  for  the  affixing  of  the 
stamp  must  be  signed  by  him  that  has  obtained  the  registration, 
or  be  accompanied  by  a  power  of  attorney  of  the  proprietor,  or 
by  a  document  establishing  the  right  of  ownership  to  the  mark 
to  be  stamped. 

CHAPTER  IV 

REJECTIONS 

ART.  85.  Registration  of  a  mark  shall  be  refused  by  the 
Division  of  Industry: 

1)  When  the  application  shall  not  have  been  made  accord- 
ing to  the  conditions  prescribed,  or  when  it  shall  not  have  been 
accompanied  by  the  necessary  documents; 

2)  When  the  Division  of  Industry  shall  have  ascertained 
that  the  examples  deposited  are  not  identical; 

3)  When  the  mark  constitutes  an  offense  to  good  morals  or 
to  religion; 

4)  When   it  contains   designs   representing  heads   of  the 
State,  members  of  reigning  families,  escutcheons,  arms  or  deco- 
rations, unless  justification  be  furnished  by  special  authorization 
granted  by  the  persons  of  which  it  is  a  question,  or  by  evidence 
of  the  right  to  make  use  of  these  escutcheons  or  arms ; 

5)  When  it  contains  individual  names,  firms  or  names  of 
collectivities,  of  which  the  depositor  may  not  legally  make  use ; 


PORTUGAL  753 

6)  When   it   contains   the   representation   of   decorations 
granted  by  the  Portuguese  Government ; 

7)  When  it  contains  designs  of  medals,  or  refers  to  diplo- 
mas or  honorable  mentions  to  which  the  depositor  has  no  right ; 

8)  When  it  contains  false  indications  of  origin; 

9)  When  in  the  summary  examination  to  which  it  is  sub- 
jected, it  is  discovered  that  another  mark  is  confused  therewith. 

SOLE  PABAGBAPH.  The  refusal  of  the  Division  of  Industry 
shall  be  communicated  by  this  latter  to  the  party  interested, 
who  may  appeal  to  the  Tribunal  of  Commerce  of  Lisbon  within 
the  term  of  three  months.  Unless  appeal  shall  have  been  lodged 
during  this  term,  the  refusal  shall  have  legal  force. 

CHAPTER  V 

TBANSFEBS 

ABT.  86.  A  mark  may  be  transferred  to  one  or  several 
other  proprietors  together  with  the  establishment  the  products 
of  which  it  serves  to  distinguish. 

SOLE  PABAGBAPH.  To  produce  all,  its  effects  in  favor  of  the 
assignee,  this  transfer  must  be  registered  at  the  Division  of 
Industry  on  petition  of  those  interested,  who  shall  produce  the 
necessary  documents,  and  on  payment  of  a  fee  of  2,000  reis, 
or  of  this  sum  augmented  by  500  reis  for  expenses  of  corres- 
pondence and  by  500  reis  per  page  if  drawn  up  in  the  French 
language ;  there  shall  be  delivered  in  exchange  a  Certificate  of 
Transfer. 

ABT.  87.  The  transfer  of  the  ownership  of  marks  shall  be 
effected  in  conformity  with  the  provisions  of  Common  Law. 

ABT.  88.  Save  stipulation  to  the  contrary,  it  is  understood 
that  the  mark  accompanies  the  industrial  or  commercial  estab- 
lishment to  which  it  refers. 


ABT.  89.  The  registration  of  a  mark  may  be  annulled  on 
petition  of  a  third  party  considering  himself  injured  if,  within 
the  term  of  one  year  counting  from  the  date  of  the  registration, 
the  party  interested  establishes  that  this  mark  constitutes  an 
imitation  of  a  mark  previously  registered,  or  is  identical  there- 
with. 

SOLE  PABAGBAPH.  However,  this  cancellation  may  be  pro- 
nounced only  by  the  Tribunal  of  Commerce,  to  which  the  Divi- 


754  PORTUGAL 

sion  of  Industry  shall  furnish  all  the  documents  that  shall  be 
demanded  of  it. 

ABT.  90.  He  that  first  shall  have  made  use  of  a  determined 
mark,  even  when  he  shall  not  have  deposited  it  and  had  it 
registered,  may,  however,  appeal  against  the  deposit  and  the 
registration  that  it  shall  be  attempted  to.  effect,  or  that  shall 
already  have  been  effected,  in  the  name  of  a  third  party,  of  a 
mark  identical  with  his  or  possible  of  being  confused  therewith. 

SOLE  PAKAGKAPH.  No  objection  may  be  admitted  when 
there  shall  have  elapsed  more  than  six  months  counting  from 
the  date  of  the  deposit  and  of  the  registration  effected,  or  when 
the  opposer  shall  have  made  use  of  his  mark  for  more  than 
six  months,  without  having,  during  this  time,  applied  for  the 
deposit  and  registration  of  this  mark. 

AET.  91.  There  shall  be  considered  as  an  imitation  a  mark 
that,  being  intended  for  objects  of  the  same  class,  resembles 
totally  or  partially  a  registered  mark,  and  differs  so  slightly 
from  this  latter  that  comparison  alone  permits  of  distinguish- 
ing easily  the  one  from  the  other. 

ART.  92.  When  there  is  no  renewal  on  the  expiration  of 
the  term  of  registration,  the  marks  shall  fall  into  public  domain. 

AET.  93.  There  shall  be  published  monthly  in  the  Diario 
do  Governo  and  the  Boletim  da  Propriedade  Industrial  a  list  of 
the  marks  forfeited  during  the  preceding  month,  with  indication 
of  the  cause  of  forfeiture. 

CHAPTER  VII 

PENALTIES 

AET.  94.  There  shall  be  amenable  to  imprisonment  of  from 
one  to  six  months  and  a  fine  of  from  10,000  to  500,000  reis,  or 
to  either  of  these  penalties: 

1)  Those  that  have  fraudulently  made  use  of  a  mark  regis- 
tered in  the  name  of  another; 

2)  Those  that  have  counterfeited  or  imitated  a  registered 
mark; 

3)  Those  that,  in  bad  faith,  have  sold  or  placed  on  sale 
objects  provided  with  a  counterfeit  or  imitation  mark,  or  one 
employed  fraudulently. 

AET.  95  There  shall  be  amenable  to  a  fine  of  from  20,000 
to  1,000,000  reis,  and  imprisonment  of  from  six  months  to  one 
year: 


PORTUGAL  755 

1)  Those  that  have  fraudulently  affixed  stamps  of  the  State 
to  marks,  or  that  have  counterfeited  them; 

2)  Those  that,  in  bad  faith,  have  placed  on  sale  objects 
provided  with  counterfeit  stamps  of  the  State. 

ART.  96.  There  shall  be  amenable  to  a  fine  of  from  5,000 
to  100,000  reis:  Those  that  have  employed,  for  non-registered 
marks,  the  mention:  "Marca  registrada"  (Registered  mark), 
or  the  initials  M.  R. 

AKT.  97.  Objects  that,  having  to  be  provided  with  an  obli- 
gatory mark,  do  not  bear  it,  may  be  seized  and  the  manufac- 
turers, merchants,  or  importers,  may  be  fined  from  20,000  to 
1,000,000  reis. 

AKT.  98.  In  case  of  repetition,  the  penalties  of  fine  and 
imprisonment  shall  be  doubled. 

SOLE  PARAGRAPH.  There  is  repetition  each  time  that  the 
culprit,  condemned  by  judgment  of  the  court  for  one  of  the 
above-indicated  offenses,  commits  a  contravention  of  the  same 
nature  before  there  shall  have  expired  five  years  after  the  said 
conviction. 

ART.  99.  Those  interested  may  institute  an  action  for  da- 
mages and  injuries  for  the  acts  mentioned  under  Arts.  94  and  95. 

ART.  100.  As  guarantee  of  the  payment  of  the  fine  or  in- 
demnity, there  shall  be  ordered  the  seizure  of  the  objects  im- 
properly and  fraudulently  marked  or  stamped. 

ART.  101.  The  judgment  that  is  pronounced  as  to  the  real- 
ity of  the  acts  indicated  or  specified  in  Arts.  94,  95,  and  97,  may 
order  the  publication  of  this  same  judgment  in  three  journals 
to  be  designated  by  the  Judge,  and  its  posting,  for  eight  days, 
upon  the  door  of  the  delinquent. 

ART.  102.  Actions  relative  to  the  contraventions  above- 
mentioned  may  be  lodged  before  the  Tribunal  of  Commerce  by 
any  person  deeming  himself  injured,  or  by  the  Public  Minister. 

SOLE  PARAGRAPH.  When  action  shall  be  brought  by  the 
Public  Minister,  the  party  interested  shall  be  admitted  to  inter- 
vene as  a  civil  party,  while  the  Public  Minister  shall  always 
intervene  in  actions  lodged  by  the  parties  interested. 

TRANSITORY  PROVISIONS 

ART.  103.  Titles  of  ownership  of  marks  of  manufacture  or 
of  commerce  granted  up  to  the  date  of  the  present  decree  shall 
continue  to  be  in  force  under  the  conditions  established  by  prior 
legislation. 


PORTUGAL  749 

determined  region  of  the  country  the  special  designation  of  a 
locality  by  which  they  are  generally  known;  the  designation  of 
a  factory  or  of  a  mercantile  establishment  that  has  not  manu- 
factured or  dealt  in  them;  or,  finally,  the  inscription  of  a  firm 
or  of  a  proper  name  of  which  he  may  not  make  use; 

3)  Every  industrial  or  merchant  that,  in  his  mark,  indicates 
the  country,  region,  or  locality,  of  production,  or  designates 
his  factory  or  mercantile  establishment,  must  inscribe  therewith 
his  commercial  firm  or  his  own  name; 

4)  And,  in  particular,  every  manufacturer  of  wines  that, 
in  his  mark,  indicates  the  producing  country  or  region,  must — 
without  prejudice  to  what  is  provided  above — add  the  name  of 
the  estate  on  which  the  wine  was  first  made,  or  of  the  parish 
where  that  estate  is  situated. 

ART.  6.  For  the  effects  of  this  law  there  shall  only  be  rec- 
ognized the  ownership  of  marks  of  manufacture  or  of  commerce 
that  have  been  duly  deposited  and  registered. 

PARAGRAPH  1.  He  that  has  first  used  a  determined  mark  of 
manufacture  or  of  commerce,  even  though  he  has  not  deposited 
or  registered  it,  may,  however,  oppose  the  deposit  and  registra- 
tion that,  in  the  name  of  another,  is  applied  for  or  effected,  of  a 
like  mark  or  one  that  may  be  confused  therewith. 

PARAGRAPH  2.  No  opposition  may  be  admitted  when  more 
than  six  months  have  elapsed,  counting  from  the  date  of  the 
deposit  and  registration  that  has  been  effected,  or  when  the 
petitioner  has  used  his  mark  for  more  than  six  months  without, 
during  that  time,  having  solicited  the  respective  deposit  and 
registration. 

PARAGRAPH  3.  The  opposition  to  which  the  preceding  arti- 
cles refer  shall  be  instituted  in  the  form  of  a  protest  before  the 
Office  in  which — according  to  Art.  7  of  this  law — it  is  incumbent 
to  effect  deposits  and  registrations ;  and  it  will  give  occasion  to 
the  avoidance  of  the  deposit  and  registration  that  have  been 
effected  only  when  it  shall  be  adjudged  according  to  law  by  the 
ordinary  courts  and  according  to  the  terms  of  Common  Law. 

ART.  7.  Deposits  and  registrations  of  marks  of  manufac- 
ture and  of  commerce  shall  be  effected  in  the  respective  Office 
of  the  Ministry  of  Public  Works,  Commerce  and  Industry,  on 
petition  of  those  interested. 

PARAGRAPH  1.  The  petition  must  be  accompanied  by  three 
facsimiles  of  the  mark  to  be  deposited  and  by  a  certificate  evi- 
dencing that  no  identical  mark,  or  none  so  similar  that  it  might 
be  confused  therewith,  has  been  registered  in  favor  of  another. 

PARAGRAPH  2.  The  minutes  of  deposits  and  registrations 
shall  be  entered  in  special  books,  from  which  there  shall  be  made 


750  PORTUGAL 

up  the  proper  titles  in  proof  of  the  ownership  of  marks,  and  the 
certificates  that  those  interested  shall  request. 

PABAGBAPH  3.  For  these  entries,  titles,  and  certificates, 
those  interested  shall  pay  the  charges  that  are  stipulated  in  the 
respective  tariffs  and  a  fixed  fee  of  1$000  reis  for  the  deposit 
and  registration. 

PABAGBAPH  4.  The  respective  Office  of  the  Ministry  of 
Public  Works,  Commerce,  and  Industry  shall  publish  the  de- 
posits and  registrations  that  are  effected,  in  the  Diario  do 
Governo. 

PABAGBAPH  5.  The  deposit  and  registration,  after  having 
been  effected  according  to  the  terms  indicated  in  the  preceding 
paragraphs,  must  be  registered,  substantially  and  not  in  extract, 
in  the  Public  Register  of  the  Commercial  Tribunal  of  the  locality 
of  the  manufacturer  or  merchant  that  has  solicited  the  mark. 

This  registration  must  be  made  on  presentation  of  the  cer- 
tificate of  registration  effected  at  the  Ministry  of  Public  Works, 
Commerce,  and  Industry,  along  with  one  copy  of  the  mark  duly 
authenticated. 

PABAGBAPH  6.  For  the  registration  to  which  Paragraph  5 
of  this  article  refers,  those  interested  shall  pay  the  fixed  fee  of 
1$000  reis,  in  addition  to  any  others  that  shall  be  due  according 
to  the  terms  of  law. 

ABT.  8.  The  transfer  of  ownership  of  marks  of  manufac- 
ture and  of  commerce  shall  be  effected  in  accordance  with  the 
dispositions  of  Common  Law ;  however,  in  order  to  have  effect, 
according  to  this  law,  there  must  be  effected  the  new  deposit 
and  registration  according  to  the  terms  of  the  preceding  articles. 

CHAPTER  III 

APPLICATION  OF  OFFICIAL  STAMPS 

ABT.  9.  To  marks  of  manufacture  or  of  commerce  that, 
in  accordance  with  the  terms  of  the  preceding  chapter,  have 
been  duly  deposited  and  registered,  there  may  be  applied  an 
official  stamp.  -  |.j  •••>* 

ABT.  10.  The  stamp  establishes  the  legal  presumption  of 
the  authenticity  of  the  marks  to  which  it  is  applied. 

ABT.  11.  The  application  of  the  stamp  shall  be  effected  in 
the  competent  Office  of  the  Ministry  of  Public  Works,  Com- 
merce, and  Industry,  on  petition  of  those  interested. 

PABAGBAPH  1.  The  petition  must  indicate  the  number  and 
quality  of  the  marks  that  it  is  sought  to  authenticate,  and  shall 
be  signed  by  the  proprietor  of  those  marks  or  by  his  legal  attor- 
ney, it  being  required  that  that  signature  be  duly  acknowledged. 
With  this  petition  there  shall  be  included  a  certificate  that  evi- 


PORTUGAL  751 

dences  that  the  deposit  and  registration  of  those  marks  have 
been  duly  effected. 

PARAGRAPH  2.  The  stamp  must,  whenever  it  be  possible, 
strike  upon  a  part  of  the  mark,  but  in  such  way  that  it  does  not 
injure  it. 

ART.  12.  For  each  stamp  that  is  applied,  the  State  shall 
collect  a  fixed  fee  of  200  reis. 

CHAPTER  IV 

PENAL  PROVISIONS 

ART.  13.  There  shall  be  liable  to  the  penalty  of  imprison- 
ment of  from  one  month  to  six  months,  and  to  a  fine  of  from 
10$000  to  100$000  reis,  or  to  the  latter  penalty  alone: 

1)  Those  that  counterfeit  a  mark  of  manufacture  or  of 
commerce ; 

2)  Those  that  make  use  of  another's  or  a  falsified  mark; 

3)  Those  that  contravene  the  dispositions  of  Nos.  2,  3,  and 
4  of  Art.  5. 

SOLE  PARAGRAPH.  The  falsification  of  a  mark  of  manufac- 
ture or  of  commerce  consists  in  the  integral  and  fraudulent 
reproduction  of  another's  mark,  whatever  be  the  means  em- 
ployed for  this. 

ART.  14.  There  shall  be  liable  to  the  penalty  of  imprison- 
ment of  from  fifteen  days  to  three  months,  and  a  fine  of  from 
5$000  to  50$000  reis,  or  to  this  latter  penalty  alone : 

1)  Those  that  imitate  a  mark  of  manufacture  or  of  com- 
merce in  such  way  that  it  may  deceive  the  buyer; 

2)  Those  that  fraudulently  make  use  of  a  mark  that,  imi- 
tating another,  may  be  confused  therewith; 

3)  Those  that  in  bad  faith  shall  sell  or  place  on  sale  objects 
marked  under  the  conditions  of  the  preceding  paragraphs. 

SOLE  PARAGRAPH.  In  order  that  there  be  the  imitation  to 
which  this  article  refers,  it  is  not  necessary  that  the  similarity 
between  the  two  marks  be  complete ;  it  suffices  if  the  counterfeit 
mark  contains  indications  susceptible  of  deceiving  the  buyer  as 
to  the  nature  or  origin  of  the  objects. 

ART.  15.  To  those  that  falsify  the  stamps  of  the  State, 
and  those  that  fraudulently  make  use  of  counterfeit  stamps, 
there  shall  be  applicable  the  dispositions  of  Art.  228,  and  its 
paragraphs,  of  the  Penal  Code. 

SOLE  PARAGRAPH.  Those  that  in  bad  faith  sell  or  place  on 
sale  objects  provided  with  counterfeit  stamps  shall  incur  the 
same  penalty. 

ART.  16.  In  case  of  repetition,  the  penalties  imposed  in 
Arts.  13  and  14  shall  be  doubled. 


752  PORTUGAL 

PARAGRAPH  1.  Repetition  will  be  assumed  whenever  the 
offender — having  been  condemned  by  sentence  delivered  in 
judgment  for  any  of  the  crimes  foreseen  in  this  law — shall  com- 
mit another  of  the  same  nature  prior  to  the  expiration  of  five 
years  from  the  said  condemnation; 

PARAGRAPH  2.  Repetition  will  not  be  assumed  when  the 
first  prosecution  was  without  avail  or  the  offender  was  par- 
doned. 

CHAPTER  V 

ACTIONS  AND  JURISDICTIONS 

ART.  17.  It  is  permitted  to  the  proprietors  of  marks  of 
manufacture  or  of  commerce  that  deem  themselves  injured  by 
the  crimes  foreseen  and  punished  under  Arts.  13,  14,  and  15,  to 
institute  the  respective  criminal  actions  or  proceedings  for 
damages  and  injuries. 

SOLE  PARAGRAPH.  These  actions  may  not  be  instituted 
cumulatively. 

ART.  18.  It  is  incumbent  on  the  agents  of  the  Public 
Ministry : 

1)  To  bring  action  for  crimes  for  seen  and  punished  under 
Arts.  13  and  15 ; 

2)  To  intervene  in  cases  that  those  interested  may  bring 
for  the  application  of  the  penalties  imposed  in  Art.  14. 

SOLE  PARAGRAPH.  This  is,  however,  without  prejudice  to 
the  dispositions  of  Art.  27,  No.  4,  of  the  Penal  Code. 

ART.  19.  There  shall  be  of  the  exclusive  competence  of 
the  Commercial  or  Civil  Courts: 

1)  Actions  that  are  intended  to  fix  the  indemnification  for 
damages  and  injuries  in  the  cases  stipulated  in  Arts.  13  and  15 ; 

2)  Actions  intended  to  ascertain  the  facts  specified  in  Art. 
14,  and  to  fix  the  respective  indemnity. 

SOLE  PARAGRAPH.  In  the  Districts  in  which  the  Commercial 
Courts  function,  these  shall  be  the  ones  competent  for  trying 
and  deciding  the  actions  that  are  designated  in  this  article 
when  they  relate  to  marks  of  commerce.  The  Civil  Courts  shall 
be  the  ones  competent  for  those  actions  relative  to  marks  of 
manufacture;  and  to  marks  of  manufacture  in  the  Districts  in 
which  Commercial  Courts  do  not  exist. 

ART.  20.  There  shall  be  of  the  exclusive  competence  of 
the  Criminal  Courts: 

1)  Actions  intended  for  the  ascertaining  of  the  facts  and 
the  application  of  the  penalties  to  which  Arts.  13  and  14  refer; 

2)  Actions  that  shall  have  as  end  the  imposition  of  the  pen- 
alties specified  in  Art  14. 


PORTUGAL  753 

SOLE  PABAGBAPH.  Of  these  actions,  those  that  are  not  based 
upon  Art.  15  shall  be  tried  correctionally. 

ABT.  21.  The  actions  mentioned  in  No.  1  of  Art.  19  may 
only  be  brought  in  view  of  sentence  that  has  become  res  adjudi- 
cata,  tried  in  the  respective  Criminal  Court,  in  accordance  with 
No.  1  of  Art.  20,  and  in  which  the  accusation  made  in  virtue 
of  any  of  the  facts  imputed  in  Arts.  13  and  15  has  been  pro- 
nounced according  to  law  and  proven. 

SOLE  PABAGBAPH.  In  this  case  the  sentence  of  the  Criminal 
Court  shall  stand  as  ample  proof  as  regards  the  existence  and 
truth  of  the  fact  alleged,  and  the  Commercial  or  Civil  Court  will 
only  have  to  decide  whether  there  is  occasion  for  indemnity  for 
damages  and  injuries,  and  what  must  be  its  amount. 

ABT.  22.  Likewise,  the  actions  to  which  No.  2  of  Art.  20 
refers  may  only  be  brought  when,  through  sentence,  passed  into 
res  adjudicate,,  tried  in  the  respective  Commercial  or  Civil 
Court,  in  accordance  with  Art.  19,  No.  2  and  Sole  Paragraph, 
there  has  been  proven  any  of  the  facts  mentioned  in  Art.  14. 

SOLE  PABAGBAPH.  In  this  case  the  sentence  of  the  respective 
Commercial  or  Civil  Court  shall  be  ample  proof  as  regards  the 
existence  and  truth  of  the  fact  alleged  and  the  Criminal  Court 
will  only  have  to  decide  as  to  the  application  of  the  correspond- 
ing penalty. 

ABT.  23.  For  the  cases  to  which  this  law  refers  there  shall 
be  competent  the  Court  of  the  plaintiff,  or  of  the  defendant,  at 
the  election  of  the  plaintiff. 

ABT.  24.  In  case  of  suspicion  of  any  of  the  facts  specified 
in  Arts.  13,  14,  and  15,  the  parties  interested  or  the  agents  of 
the  Public  Minister  may  petition  from  the  competent  Courts 
and  in  accordance  with  the  terms  of  the  corresponding  legisla- 
tion, that  seizure  be  made  of  the  objects  wrongly  or  fraudulently 
marked  or  stamped,  and  also  of  the  instruments  and  utensils 
specially  intended  for  the  imitation  of  the  marks,  or  for  the 
falsification  of  the  marks  or  stamps. 

PABAGBAPH  1.  If  the  seizure  is  made  on  petition  of  any 
interested  party,  this  latter  must  sign  a  bond  making  him 
responsible  for  losses  and  damages; 

PABAGBAPH  2.  The  seizure  shall  be  without  effect  if  the 
party  that  solicits  it  does  not  bring  action  within  the  term  of 
thirty  days  in  accordance  with  this  law. 

ABT.  25.  The  articles  seized  will  serve  as  security  for  the 
payment  of  the  fine  due  to  the  National  Treasury,  when  the 
seizure  has  been  made  on  petition  of  the  Public  Minister,  or  for 
the  payment  of  the  indemnity  for  losses  and  damages,  when 
the  seizure  has  been  petitioned  by  the  party  interested. 


754  PORTUGAL 

ART.  26.  There  shall  be  destroyed,  whenever  possible 
without  injury  to  the  respective  articles,  the  stamps  recognized 
as  false,  made  in  imitation,  or  those  that  do  not  satisfy  the 
requirements  of  this  law,  and  the  instruments  and  utensils  spe- 
cially intended  for  the  making  of  those  marks  and  stamps. 

ART.  27.  The  Court  that  decides  regarding  the  existence 
and  truth  of  the  facts  alleged  and  specified  in  Arts.  13,  14,  and 
15,  may  order  that  the  sentence  by  it  delivered  be  published  in 
the  journals  that  it  shall  designate,  and  posted  for  eight  days 
on  the  door  of  the  establishment  of  the  offender. 

CHAPTER  VI 

PROVISIONS  RELATIVE  TO  FOREIGNERS 

ART.  28.  Foreigners  that  carry  on  an  industry  or  com- 
merce in  Portugal  shall  enjoy  the  rights  and  guarantees  con- 
ceded to  Portuguese  subjects,  provided  that  they  comply  with 
the  dispositions  of  the  present  law. 

ART.  29.  Foreigners  whose  industry  or  commerce  is  car- 
ried out  without  Portugal  shall  enjoy  in  this  Kingdom  the  same 
rights  and  guarantees  as  the  legislation  of  their  country  con- 
cedes to  Portuguese  subjects. 

ART.  30.  Products  of  foreign  origin  that  on  arriving  in 
Portugal  shall  bear  a  Portuguese  mark,  or  that  bear  the  name 
or  firm  of  an  industrial  or  merchant  here  resident,  or  of  a  mer- 
cantile or  industrial  establishment  that  has  its  domicile  here, 
or  the  designation  of  any  locality  of  this  Kingdom,  shall  be 
seized  as  soon  as  they  reach  any  of  the  National  Custom 
Houses. 

SOLE  PARAGRAPH.  The  seizure  shall  be  ordered  by  the  Direc- 
tor of  the  Custom  House  where  those  products  are  entered, 
there  being  drawn  up  a  statement  that  shall  be  forwarded  to 
the  respective  agent  of  the  Public  Ministry,  to  the  end  of  bring- 
ing proper  action. 

ART.  31.  The  proviso  of  the  preceding  article,  in  the  cor- 
responding part,  shall  be  without  effect  when  there  is  presented 
an  authentic  or  certified  document  by  which  it  is  shown  that  the 
mark,  name,  or  firm,  that  is  found  on  the  goods  coming  from 
abroad  is  used  with  the  consent  of  the  party  interested. 

ART.  32.  The  dispositions  of  this  law  will  not  affect  the 
stipulations  of  treaties  and  conventions  already  celebrated,  or 
that  shall  be  celebrated  in  the  future,  between  Portugal  and 
foreign  nations. 

CHAPTER  VII 

TRANSITORY  PROVISIONS 
ART.  33.    During  the  first  year  of  execution  of  this  law, 


PORTUGAL  755 

the  application  for  the  deposit  and  registration  of  marks  of 
manufacture  and  of  commerce  shall  be  drawn  up,  not  only  with 
the  negative  certificate  to  which  Art.  7,  Paragraph  1,  refers, 
but  together  with  the  certification  of  a  sentence  that,  in  a 
judicial  process  in  a  justification  suit,  has  recognized  the  peti- 
tioner to  be  the  true  author  of  the  mark  that  he  desires  to 
register. 

SOLE  PARAGRAPH.  There  shall  be  excepted  those  marks 
already  registered  with  the  Tribunal  of  Commerce,  the  deposit 
and  registration  of  which  may  be  effected  in  the  Ministry  of 
Public  Works  on  presentation  of  the  certificate  that  proves  that 
prior  registration. 

ART.  34.  The  Government  shall  make  the  tariffs  and  regu- 
lations that  may  be  necessary  for  the  execution  of  the  present 
law. 

ART.  35.    All  legislation  to  the  contrary  is  revoked. 


PORTUGUESE  COLONIES 

DECREE  EXTENDING  THE  APPLICATION  OF  THE 
PROVISIONS  RELATIVE  TO  INDUSTRIAL  PROP- 
ERTY* TO  THE  PROVINCES  OF  ULTRAMAR,  TO 
THE  AUTONOMOUS  DISTRICT  OF  TIMOR  AND  TO 
THE  TERRITORIES  PLACED  UNDER  THE  ADMIN- 
ISTRATION OF  THE  MOZAMBIQUE  AND  NYASSA 
COMPANIES 

DECEMBER  17, 1903 

CHAPTER  I 
•          ••••••••• 

CHAPTER  II 

INDUSTRIAL,  AND  COMMERCIAL  MARKS 

ARTICLE  5.  Every  industrial,  merchant  or  agrarian,  Portu- 
guese or  foreign,  having  a  mark  of  manufacture  or  of  com- 
merce registered  in  the  National  Register  of  the  Minister  of 
Public  Works,  of  Commerce  and  Industry,  shall  have  right  to 
this  being  protected,  in  conformity  with  the  provisions  of  the 
present  decree,  in  the  Provinces,  the  District  and  the  Territories 
mentioned  in  the  first  article  (Provinces  of  Ultramar,  Autono- 
mous District  of  Timor,  and  Territories  subject  to  the  adminis- 
tration and  to  the  exploitation  of  the  Mozambique  and  Nyassa 
Companies.  Ed.),  with  the  guarantees  that  the  legislation  in 
force  in  the  mother  country  confers  upon  him. 

ART.  6.  The  protection  granted  in  virtue  of  the  present 
decree  to  the  ownership  of  registered  marks  shall  endure  as 
long  as  it  shall  hold  in  the  mother  country,  and  shall  cease  in 
case  of  avoidance  or  of  expiration  of  the  corresponding  regis- 
tration at  the  Ministry  of  Public  Works,  of  Commerce  and  of 
Industry. 

ART.  7.  Industrials,  merchants  or  agrarians  mentioned  in 
Art.  5  that  shall  desire  to  have  extended  to  one  or  more 
Provinces  of  Ultramar  or  to  the  Autonomous  District  of  Timor 
the  protection  granted  to  their  marks  in  the  mother  country, 
shall  deposit  with  the  Direction  General  of  Commerce  and 
Industry : 

*  Provisions  not  relating  to  trade  marks  are  omitted. 


PORTUGUESE  COLONIES  757 

a)  An  application,  drawn  up  in  Portuguese,  indicating  the 
Province  or  Provinces  of  Ultramar  or  the  Autonomous  District 
in  which  they  desire  that  their  marks  be  protected ; 

b)  As  many  certificates  of  registration  of  each  mark,  de- 
livered by  the  Bureau  of  Industrial  Property,  as  shall  be  neces- 
sary for  the  Provinces  of  Ultramar  or  the  Autonomous  District 
in  which  they  apply  for  the  obtention  of  protection ; 

c)  As  many  cliches  for  the  typographic  reproduction  of 
each  mark  as  are  necessary  for  the  Provinces  of  Ultramar  or 
the  Autonomous  District  for  which  protection  is  petitioned; 

d)  Statements  with  declaration  attesting  that  the  tax  in- 
dicated in  Art.  8  has  been  paid  for  all  the  marks  to  be  protected 
in  each  of  the  Provinces  of  Ultramar  or  in  the  Autonomous 
District. 

SEC.  1.  When  it  shall  be  a  question  of  obtaining  the  pro- 
tection of  a  mark  of  manufacture  or  of  commerce  in  the  Province 
of  Mozambique,  the  petitioner  shall  deposit,  in  addition  to  the 
certificates  and  cliches  indicated  under  letters  (b)  and  (c)  of 
the  present  article,  as  many  other  certificates  and  cliches  as 
there  shall  be  Territories  of  the  Mozambique  or  Nyassa  Com- 
panies in  which  protection  is  to  be  exercised. 

SEC.  2.  The  cliche  mentioned  under  letter  (c)  may  be  of 
copper  or  of  any  other  material  suitable  for  printing  with  or- 
dinary printing  type.  None  of  its  superficial  dimensions  shall 
be  less  than  fifteen  millimeters  nor  more  than  one  hundred  milli- 
meters; it  shall  have  a  height  of  twenty-four  millimeters  and 
shall  reproduce  the  mark  in  its  smallest  detail. 

AST.  8.  Those  interested  shall  have  to  pay  for  each  mark 
to  be  protected  a  fee  of  2$500  for  each  Province  or  the  Autono- 
mous District  of  Ultramar. 

This  fee  shall  be  paid  to  the  Bank  of  Portugal,  to  the  order 
of  the  Ministry  of  Marine  or  of  Colonial  Affairs,  through  in- 
structions delivered  by  the  Bureau  of  Industrial  Property. 

SOLE  SECTION.  A  fee  of  the  same  amount  shall  be  paid  for 
the  renewal,  the  modification,  or  the  transfer  of  each  mark. 

ART.  9.  The  petitions  mentioned  under  letter  (a)  of  Art. 
7  shall  be  submitted  to  the  decision  of  the  Direction  General  of 
Commerce  and  Industry,  which  shall  give  course  thereto  when 
the  petitioner  shall  have  satisfied  the  conditions  indicated  in 
the  same  article. 

SOLE  SECTION.  Following  the  decision  of  which  it  is  a  ques- 
tion, proceedings  shall  be  taken  to  the  Bureau  of  Industrial 
Property : 

a)  For  the  registration  of  the  concession  in  the  Register 
intended  therefor; 


758  PORTUGUESE  COLONIES 

b)  For  the  endorsement,  upon  each  one  of  the  certificates 
of  which  mention  is  made  under  letter  (b)  and  under  the  first 
section  of  Art.  7,  of  a  mention  evidencing  this  registration. 

ART.  10.  The  Direction  General  of  Commerce  and  Indus- 
try shall  forward  each  month  to  the  Direction  General  of  Colo- 
nial Affairs : 

1)  The  certificates  mentioned  under  letter  (b)  and  under 
the  first  section  of  Art.  7 ; 

2)  As  many  cliches  for  the  typographical  reproduction  of 
each  mark  as  there  are  indicated  under  letter  (c)  and  under 
section  1  of  Art.  7; 

3)  A  list  of  the  statements  mentioned  under  letter  (d)  of 
Art.  7  for  each  Province  of  Ultramar  or  Autonomous  District 
for  which  the  protection  of  marks  has  been  granted; 

4)  A  note  of  modifications,  transfers,  renewals,  avoidances 
and  expirations  of  marks,  in  as  many  copies  as  shall  be  neces- 
sary for  the  Provinces,  the  Autonomous  District  and  the  Ter- 
ritories mentioned  in  the  first  article,  for  which  the  protection 
of  marks  in  question  has  been  granted. 

SOLE  SECTION.  The  documents  designated  under  Nos.  1,  3 
and  4  of  the  present  article  shall  be  inscribed  in  a  special  Regis- 
ter in  the  competent  Bureau  of  the  Direction  General  of  Colo- 
nial Affairs. 

ART.  11.  The  Direction  General  of  Colonial  Affairs  shall 
forward  to  the  Governor  of  each  of  the  possessions  of  Ultramar 
the  documents  indicated  under  Nos.  1  and  4,  and  the  cliches 
mentioned  under  No.  2  of  Art.  10,  mention  being  made  of  the 
Territory  of  this  possession  that  is  found  under  the  direct  ad- 
ministration of  the  State,  to  the  end  that  these  documents  be 
published  in  the  respective  official  bulletin  and  that  the  cliches 
be  duly  preserved  in  the  archives. 

SEC.  1.  The  documents  and  the  cliches  concerning  the  Ter- 
ritories that  are  found  under  the  administration  and  the  exploi- 
tation of  the  Mozambique  and  Nyassa  Companies  shall  be  de- 
livered by  the  Direction  General  of  Colonial  Affairs  to  the 
Deputy  Administrators  of  these  Companies,  through  interme- 
diary of  the  respective  Commissioners  of  the  Government,  to 
the  end  of  being  sent  by  the  same  Administrators  to  the  Gover- 
nor of  the  Territories,  which  shall  have  published  in  the  bulle- 
tins of  the  Companies  the  documents  indicated  under  Nos.  1 
and  4  of  Art.  10,  and  shall  have  the  cliches  duly  deposited  in 
the  archives. 

SEC.  2.  The  documents  designated  under  No.  3  of  Art.  10 
shall  be  forwarded  by  the  said  Direction  General  to  the  Seventh 
Bureau  of  Public  Accounts. 


PORTUGUESE  COLONIES  759 

CHAPTER  III 

GENERAL  PROVISIONS 

ART.  12.  The  proceeds  arising  from  the  payment  of  the 
fees  mentioned  under  .  .  .  Art.  8  of  the  present  decree  shall 
constitute  a  special  fund  of  the  Ministry  of  Marine  and  of  Co- 
lonial Affairs  (Direction  of  Colonial  Affairs),  to  be  applied  to  the 
expenses  of  the  Statistical  Service  of  Colonial  Affairs  and  of  the 
publications  that  pertain  thereto. 

ART.  13.  The  provisions  of  the  present  decree  with  refer- 
ence to  industrial  and  commercial  marks  shall  become  effective 
counting  from  May  1, 1904. 

ART.  14.    All  legislation  to  the  contrary  is  repealed. 


RHODESIA 

REGISTRATION  REGULATIONS  NO.  59  OF 
APRIL  6,  1897 

TRADE  MARK — REPEALS 

1.  So  much  of  the  Act  of  the  Colony  of  the  Cape  of  Good 
Hope  No.  22  of  1877*  entitled  "An  Act  to  establish  a  Register 
of  Trade  Marks  in  this  Colony,"  or  any  other  law  as  may  be 
repugnant  to  or  inconsistent  with  these  regulations,  shall  be 
and  the  same  are  hereby  repealed. 

REQUISITES 

2.  For  the  purposes  of  the  "Trade  Marks  Registration 
Act,  1877, ' '  a  trade  mark  must  henceforth  consist  of  or  contain 
at  least  one  of  the  following  essential  particulars: — 

(a)  A  name  of  an  individual  or  firm  printed,  impressed,  or 
woven  in  some  particular  and  distinctive  manner,  or 

(b)  A  written  signature  or  copy  of  a  written  signature  of 
the  individual  or  firm  applying  for  registration  thereof  as  a 
trade  mark; 

(c)  A  distinctive  device,  mark,  brand,  heading,  label,  or 
ticket;  or 

(d)  An  invented  word  or  invented  words;  or 

(e)  A  word  or  words  having  no  reference  to  the  character 
or  quality  of  the  goods,  and  not  being  geographical  name, 
and  there  may  be  added  to  any  one  or  more  of  these  particulars 
any  letters,  words,  or  figures,  or  combination  of  letters,  words, 
or  figures,  or  any  of  them ;  but  the  applicant  for  registration  of 
any  such  additional  matter  must  state  in  his  application  the 
essential  particulars  of  the  trade  mark  and  must  disclaim  in 
his  application  any  right  to  the  exclusive  use  of  the  added 
matter. 

PROVISO 
Provided  as  follows: — 

(1)  A  person  need  not  under  this  section  disclaim  his  own 
name  or  the  foreign  equivalent  thereof  or  his  place  of  business, 
but  no  entry  of  any  such  name  shall  affect  the  right  of  any 
owner  of  the  same  name  to  use  that  name  or  the  foreign  equiv- 
alent thereof. 

(2)  Any  special  and  distinctive  word  or  words,  letter,  fig- 

*  To  the   end   that   the  two  laws  may  be   read   together,   the  Act  of  the 
Colony  of  the  Cape  of  Good  Hope,  No.  22  of  1877,  is  appended. 


RHODESIA  761 

ure  or  combination  of  letters  or  figures,  or  of  letters  and  figures, 
used  as  a  trade  mark  before  the  Eighth  day  of  August,  One 
thousand  eight  hundred  and  seventy-seven  may  be  registered 
as  a  Trade  Mark  under  the  said  Act. 

TITLE 

3.    These  regulations  may  be  cited  as  "The  Trade  Marks 
Registration  Regulations,  1897.'* 


ACT  NO.  22  OF  AUGUST  8,  1877* 

Preamble 

Whereas  it  is  expedient  to  establish  in  this  colony  a  regis- 
ter of  trade  marks :  Be  it  enacted  by  the  Governor  of  the  Cape 
of  Good  Hope,  with  the  advice  and  consent  of  the  Legislative 
Council  and  House  of  Assembly  thereof,  as  follows : 

Register  to  be  kept  by  Registrar  of  Deeds 

I.  A  register  of  trade  marks  as  defined  by  this  Act  and  of 
the  proprietors  thereof  shall  be  established  and  kept  by  the 
registrar  of  deeds  in  the  office  of  the  said  registrar  of  deeds; 
and  from  and  after  the  first  day  of  July,  one  thousand  eight 
hundred  and  seventy-eight,  a  person  shall  not  be  entitled  to 
institute  any  proceeding  to  prevent  or  to  recover  damages  for 
the  infringement  of  any  trade  mark  as  defined  by  this  Act  until 
and  unless  such  trade  mark  is  registered  in  pursuance  of  this 
Act. 

How  to  be  registered 

II.  A  trade  mark  must  be  registered  as  belonging  to  par- 
ticular goods  or  classes  of  goods,  and  when  registered  shall  be 
assigned  and  transmitted  only  in  connection  with  the  goodwill 
of  the  business  concerned  in  such  particular  goods  or  classes  of 
goods,  and  shall  be  determinable  with  such  goodwill,  but  subject 
as  aforesaid,  registration  of  a  trade  mark  shall  be  deemed  to  be 
equivalent  to  public  use  of  such  mark. 

Effect  of  registration  as  first  proprietor 

III.  The  registration  of  a  person  as  first  proprietor  of  a 
trade  mark  shall  be  prima  facie  evidence  of  his  right  to  the 
exclusive  use  of  such  trade  mark,  and  shall  after  the  expiration 
of  five  years  from  the  date  of  such  registration  be  conclusive 
evidence  of  his  right  to  the  exclusive  use  of  such  trade  mark, 
subject  to  the  provisions  of  this  Act  as  to  its  connection  with 
the  goodwill  of  a  business. 

*To  be  read  with  preceding  law  of  Rhodesia,  subject  to  proviso  of  Sec.  1. 


762  RHODESIA 

Effect  of  registration  as  subsequent  proprietor 

IV.  Every  proprietor  registered  in  respect  to  a  trade  mark 
subsequently  to  the  first  registered  proprietor  shall  as  respects 
his  title  to  that  trade  mark  stand  in  the  same  position  as  if  his 
title  were  a  continuation  of  the  title  of  the  first  registered 
proprietor. 

Court  may  be  applied  to  in  certain  cases  to  rectify  register 

V.  If  the  name  of  any  person  who  is  not  for  the  time  being 
entitled  to  the  exclusive  use  of  a  trade  mark  in  accordance  with 
this  Act,  or  otherwise  in  accordance  with  law,  is  entered  on  the 
register  of  trade  marks  as  a  proprietor  of  such  trade  mark,  or 
if  the  registrar  refuses  to  enter  on  the  register  as  proprietor  of 
a  trade  mark  the  name  of  any  person  who  is  for  the  time  being 
entitled  to  the  exclusive  use  of  such  trade  mark  in  accordance 
with  this  Act,  or  otherwise  in  accordance  with  law,  or  if  any 
mark  is  registered  as  a  trade  mark  which  is  not  authorized  to 
be  so  registered  under  this  Act,  any  person  aggrieved  may  apply 
in  the  prescribed  manner  for  an  order  of  the  court  that  the 
register  may  be  rectified,  and  the  court  may  either  refuse  such 
application,  or  it  may,  if  satisfied  with  the  justice  of  the  case, 
make  an  order  for  the  rectification  of  the  register,  and  may 
award  damages  to  the  party  aggrieved.    Where  each  of  several 
persons  claims  to  be  registered  as  proprietor  of  the  same  trade- 
mark, the  registrar  may  refuse  to  comply  with  the  claims  of  any 
such  persons  until  their  rights  have  been  determined  by  the 
court,  and  the  registrar  may  himself  submit   or   require  the 
claimants  to  submit  in  the  prescribed  manner  their  rights  to 
the  court.    The  court  may,  in  any  proceeding  under  this  section, 
decide  any  question  as  to  whether  a  mark  is  or  is  not  such  a 
trade  mark  as  is  authorized  to  be  registered  under  this  Act; 
also  any  question  relating  to  the  right  of  any  person  who  is 
party  to  such  proceeding  to  have  his  name  entered  on  the  regis- 
ter of  trade  marks,  or  to  have  the  name  of  some  other  person 
removed  from  such  register ;  also  any  other  question  that  it  may 
be  necessary  or  expedient  to  decide  for  the  rectification  of  the 
register.    Whenever  any  order  has  been  made  rectifying  the 
register,  the  court  shall  by  its  order  direct  that  due  notice  of 
such  rectification  be  given  to  the  registrar. 

Certain  trade  marks  not  to  be  registered  without  special  leave 

of  court 

VI.  The  registrar  shall  not,  without  the  special  leave  of 
the  court,  to  be  given  in  the  prescribed  manner,  register  in 
respect  of  the  same  goods  or  classes  of  goods  a  trade  mark 
identical  with  one  which  is  already  registered  with  respect  to 


RHODESIA  763 

such  goods  or  classes  of  goods,  and  the  registrar  shall  not 
register  with  respect  to  the  same  goods  or  classes  of  goods  a 
trade-mark  so  nearly  resembling  a  trade  mark  already  on  the 
register  with  respect  to  such  goods  or  classes  of  goods  as  to  be 
calculated  to  deceive.  It  shall  not  be  lawful  to  register  as  part 
of  or  in  combination  with  a  trade  mark  any  words  the  exclusive 
use  of  which  would  not  by  reason  of  their  being  calculated  to 
deceive  or  otherwise,  be  deemed  entitled  to  protection  in  a  court 
of  equity  in  England,  or  any  scandalous  designs. 

Registrar  may  make  general  rules 

VII.  The  registrar  of  deeds  may  from  time  to  time,  with 
the  consent  of  the  Governor  as  to  fees,  make  and,  when  made, 
alter,  annul,  or  vary  such  general  rules  as  to  the  registry  of 
trade  marks,  and  as  to  notices  to  bo  given  by  advertisement 
before  the  registration  of  trade  marks,  and  as  to  the  classifica- 
tion of  goods  for  the  purposes  of  this  Act,  and  as  to  the  regis- 
tration of  first  and  subsequent  proprietors  of  trade  marks,  and 
as  to  the  fees  to  be  charged  for  registration,  and  also  for  the 
continuance  of  a  trade  mark  on  the  register  or  otherwise  and 
as  to  the  removal  from  the  register  of  any  trade  mark,  as  to 
notices  and  as  to  the  persons  entitled  to  inspect  the  register, 
and  as  to  any  proceedings  to  be  taken  to  obtain  the  judgment 
or  leave  of  the  court  in  any  matter  in  which  the  judgment  or 
leave  of  the  court  is  required  to  be  obtained  under  this  Act,  and 
generally  for  the  purpose  of  carrying  into  effect  this  Act,  as 
he  may  deem  expedient.    Any  rules  made  in  pursuance  of  this 
section  shall  be  forthwith  laid  before  both  Houses  of  Parlia- 
ment if  Parliament  be  then  sitting,  or  if  not  then  sitting,  then 
within  ten  days  after  the  then  next  assembling  of  Parliament, 
and  shall  be  of  the  same  validity  as  if  they  had  been  enacted  by 
Parliament:   Provided  that  if  either  House  of  Parliament  re- 
solve, within  one  month  after  such  rules  have  been  laid  before 
such  House  that  any  of  such  rules  ought  not  to  continue  in  force, 
any  rule  in  respect  of  which  such  resolution  has  been  passed 
shall  after  the  date  of  such  resolution  cease  to  be  of  any  force, 
without  prejudice  nevertheless  to  the  making  of  any  other  rule 
in  its  place,  or  to  anything  done  in  pursuance  of  any  such  rules 
before  the  date  of  such  resolution. 

Effect  of  registrar's  certificate 

VIII.  The  certificate  of  the  registrar  as  to  any  entry,  mat- 
ter, or  thing  which  he  is  authorized  by  this  Act  or  any  general 
rules  made  thereunder  to  make  or  do,  shall  be  evidence  of  such 
entry  having  been  made,  and  of  the  contents  thereof,  and  of 
such  matters  and  things  having  been  done  or  left  undone. 


764  RHODESIA 

Definition  of  terms 

IX.  For  the  purposes  of  this  Act: 

A  trade  mark  consists  of  one  or  more  of  the  following 
essential  particulars,  that  is  to  say, 

A  name  of  an  individual  or  firm  printed,  impressed,  or 
woven  in  some  particular  and  distinctive  manner;  or 

A  written  signature  or  copy  of  a  written  signature  of  an 
individual  or  firm;  or 

A  distinctive  device,  mark,  heading,  label,  ticket ;  or 

And  there  may  be  added  to  any  one  or  more  of  the  said 
particulars  any  letters,  words,  or  figures,  or  combination  of 
letters,  words,  or  figures ;  also 

Any  special  and  distinctive  word  or  words,  or  combination 
of  figures  or  letters  used  as  a  trade  mark  before  the  passing  of 
this  Act  may  be  registered  as  such  under  this  Act. 

"Prescribed"  means  prescribed  by  general  rules  made  in 
pursuance  of  this  Act,  and 

"Court"  means  the  supreme  court,  or  as  to  matters  within 
the  districts  over  which  the  court  of  the  eastern  districts  has 
jurisdiction,  the  court  of  the  eastern  districts,  or  any  court 
which  may  be  declared  to  be  a  court  for  the  purposes  of  this 
Act,  by  such  general  rules  as  aforesaid. 

Short  title 

X.  This  Act  may  be  cited  for  all  purposes  as  the  "Trade 
Marks  Registration  Act,  1877." 


RUMANIA 

LAW  OF  APRIL  15/27,  1879 
TITLE  I 

OWNERSHIP  OF  TRADE  MARKS 

ARTICLE  1.  There  shall  be  considered  as  marks  of  manu- 
facture or  of  commerce  the  different  signs  serving  to  distinguish 
the  products  of  a  manufacturer,  such  as:  the  name  under  a 
special  form,  denominations,  imprints,  stamps,  seals,  reliefs, 
vignettes,  figures,  wrappers  and  other  such. 

ART.  2.  There  shall  not  be  considered  as  marks  of  manu- 
facture or  of  commerce  letters  or  monograms,  the  arms  of  the 
State  or  of  a  Commune,  that  it  has  been  the  custom  to  affix  to 
such  products. 

ART.  3.  The  use  of  a  mark  of  manufacture  or  of  commerce 
is  optional ;  however,  for  pharmaceutical  products  and  for  those 
that  concern  more  particularly  hygiene  and  public  health,  the 
Government  may  declare  marks  of  manufacture  or  of  commerce 
obligatory,  and  even,  in  special  cases,  through  a  decree  rendered 
in  the  form  of  a  public  administrative  regulation. 

ART.  4.  A  mark  adopted  by  a  merchant  or  a  manufac- 
turer may  not  be  employed  by  another  merchant  or  manufac- 
turer for  .distinguishing  goods  of  the  same  nature. 

ART.  5.  The  right  that  a  merchant  or  a  manufacturer  has 
to  a  mark  of  commerce  or  of  manufacture  shall  cease  at  the 
same  time  as  the  business  or  the  manufacture  for  which  it  has 
been  adopted.  However,  a  mark  of  manufacture  is  transferable. 

In  case  of  transfer,  the  assignee  or  the  successor  shall  be 
bound  to  petition  the  transcription  of  the  mark  to  his  name 
within  the  term  of  three  months;  this  delay  once  expired,  the 
right  to  the  mark  shall  cease  unless  the  transcription  shall  have 
been  made. 

ART.  6.  No  one  shall  have  the  right  of  availing  himself  of 
a  mark  adopted  by  another  merchant  or  manufacturer  for  mark- 
ing goods,  nor  the  business  name  or  the  denomination  adopted 
for  designating  an  establishment. 

ART.  7.  Merchants  or  manufacturers  that  desire  to  claim 
the  exclusive  ownership  of  a  mark  shall  be  bound  to  deposit  two 
copies  of  the  design  of  this  mark  with  the  clerk  of  the  Tribunal 
of  Commerce  of  their  domicile.  One  copy  shall  be  annexed  to 
the  Trade  Mark  Register  of  the  Tribunal  of  Commerce  and  the 


766  RUMANIA 

other,  legalized  by  the  Tribunal,  shall  be  delivered  to  the  mer- 
chant or  manufacturer. 

ABT.  8.  The  deposit  of  a  mark  of  commerce  or  of  manu- 
facture shall  be  valid  for  fifteen  years.  The  ownership  of  this 
mark  may  be  extended  for  another  term  of  fifteen  years  if  the 
deposit  thereof  is  renewed  on  the  expiration  of  the  first  term. 

ABT.  9.  Application  for  registration  of  each  mark  of  com- 
merce or  of  manufacture  shall  be  made  at  the  Tribunal  of  Com- 
merce upon  stamped  paper  of  twenty  lei. 

TITLE  II 


ABT.  10.  Foreigners  that  possess  in  Eumania  industrial 
or  commercial  establishments  shall  have  the  benefit,  for  the 
products  of  their  establishments,  of  the  rights  accorded  by  the 
present  law,  if  they  fulfill  the  formalities  that  it  prescribes. 

ABT.  11.  Rumanians,  as  well  as  foreigners,  whose  indus- 
trial or  commercial  establishments  are  situated  without  Ru- 
mania, shall  have  the  benefit  of  the  rights  accorded  by  this  law 
for  the  products  of  their  establishments,  if,  though  diplomatic 
conventions  concluded  with  the  States  in  which  these  establish- 
ments are  located,  reciprocity  is  provided  for  Rumanian  marks 
of  manufacture. 

In  this  case,  foreign  marks  shall  be  filed  with  the  Clerk  of 
the  Tribunal  of  Commerce  of  the  District  Ilfoj  (at  Bucarest). 

TITLE  III 

PENALTIES  FOB  VIOLATION  AND  NON-OBSEBVANCE  OF  THE 
PBESENT  LAW 

ABT.  12.  They  shall  be  punishable  by  a  fine  of  from  50  to 
2500  lei,  and  by  imprisonment  of  from  three  months  to  three 
years,  or  by  either  one  of  these  penalties : 

1)  That  shall  have  counterfeited  a  mark  or  shall  have  used 
a  counterfeit  mark; 

2)  That  shall  have  fraudulently  applied  to  their  products 
or  to  the  goods  of  their  trade  a  mark  belonging  to  another ; 

3)  That  shall  have  sold,  knowingly,  or  shall  have  placed  on 
sale  one  or  more  products  bearing  a  counterfeit  or  fraudulently 
applied  mark. 

ABT.  13.  They  shall  be  punishable  by  a  fine  of  from  50  to 
1500  lei,  and  by  imprisonment  of  from  one  month  to  one  year, 
or  by  either  of  these  two  penalties : 

1)  That,  although  not  having  counterfeited  a  mark,  shall 
have  imitated  it  in  a  fraudulent  manner,  so  as  to  be  possible  of 


RUMANIA  767 

deceiving  the  purchaser,  or  even  shall  have  employed  a  fraudu- 
lently imitated  mark; 

2)  That  shall  have  employed  a  mark  bearing  indications 
possible  of  deceiving  the  purchaser  as  to  the  nature  of  the 
product ; 

3)  That,  knowingly,  shall  have  sold  or  placed  on  sale  one 
or  more  products  bearing  a  fraudulently  imitated  mark,  or  bear- 
ing indications  possible  of  deceiving  the  purchaser  regarding 
the  nature  of  the  product. 

ART.  14.  They  shall  be  punishable  by  a  fine  of  from  50  to 
1000  lei,  and  by  imprisonment  of  from  fifteen  days  to  six 
months,  or  by  either  of  these  penalties: 

1)  That  shall  not  have  applied  to  their  goods  a  mark 
declared  obligatory; 

2)  That  shall  have  sold  or  placed  on  sale  one  or  more  prod- 
ucts not  bearing  the  mark  declared  obligatory  for  these  classes 
of  products ; 

3)  That  shall  have  violated  the  provisions  of  decrees  ren- 
dered for  the  execution  of  Art.  3  of  the  present  law. 

ART.  15.  The  penalties  established  by  the  present  law  may 
not  be  cumulative.  There  shall  be  pronounced  the  greatest 
penalty  for  all  acts  committed  prior  to  the  first  prosecution. 

ART.  16.  The  penalties  prescribed  by  Arts.  12,  13  and  14 
may  be  doubled  in  cases  of  repetition. 

Repetition  shall  be  assumed  when  there  shall  have  been 
pronounced  against  the  accused,  within  the  five  years  preceding, 
a  condemnation  for  one  of  the  crimes  foreseen  by  the  present 
law. 

ART.  17.  Art.  60  of  the  Penal  Code  may  be  applied  to  the 
crimes  foreseen  by  the  present  law. 

ART.  18.  Offenders  may  be  deprived,  for  a  term  that  shall 
not  exceed  ten  years,  of  the  right  to  take  part  in  the  elections 
of  Chambers  of  Commerce  and  other  public  institutions  of  an 
industrial  or  commercial  nature  that  shall  have  occasion  for 
elections. 

At  the  same  time,  the  Tribunal  may  order  the  posting  of 
the  judgment  in  places  that  it  shall  designate,  as  well  as  its  total 
or  partial  insertion  in  journals  that  it  shall  designate,  all  this 
at  the  expense  of  the  condemned. 

ART.  19.  The  Tribunal  may  order  the  confiscation  or  the 
destruction  of  the  products  the  mark  whereof  shall  be  recog- 
nized as  contrary  to  the  provisions  of  Arts.  12  and  13,  as  well 
as  of  the  instruments  and  utensils  employed  for  the  accomplish- 
ment of  the  crime,  and  this  even  in  case  of  acquittal. 

The  Tribunal  may  order  that  the  confiscated  products  be 


768  EUMANIA 

adjudged  to  the  owner  of  the  mark  that  has  been  counterfeited 
or  fraudulently  affixed  or  imitated,  in  addition  to  the  damages 
and  injuries,  if  it  so  deems  expedient. 

In  every  case  the  Tribunal  shall  order  the  destruction  of 
the  marks  that  have  been  recognized  as  contrary  to  the  pro- 
visions of  Arts.  12  and  13. 

AKT.  20.  In  the  cases  provided  for  in  paragraphs  1  and  2 
of  Art.  14,  the  Tribunal  shall  always  prescribe  that  marks 
declared  obligatory  be  affixed  to  the  goods  that  are  subject  to 
this  obligation. 

The  Tribunal  may  pronounce  confiscation  of  the  goods,  if 
the  defendant,  within  the  five  years  preceding,  shall  have  been 
convicted  of  crimes  foreseen  in  the  first  two  paragraphs  of 
Art.  14. 

ART.  21.  Judgment  for  these  infractions  shall  be  given 
preference. 

TITLE  IV 

JURISDICTION 

ART.  22.  Civil  actions  relative  to  marks  of  manufacture 
or  of  commerce  shall  be  submitted  to  the  Tribunals  of  Com- 
merce and  shall  be  judged  as  summary  matters. 

In  case  of  action  brought  criminally,  if  the  defendant  raises 
in  his  defense  questions  relative  to  the  ownership  of  the  mark, 
the  Criminal  Court  shall  decide  regarding  the  exception. 

ART.  23.  The  owner  of  a  mark  of  manufacture  or  of  com- 
merce that  shall  prove  that  there  have  been  marked  certain 
goods  to  his  prejudice  and  in  contravention  of  the  provisions 
of  the  present  law,  may  have  a  detailed  description  of  these 
products  made  by  the  bailiff,  by  virtue  of  an  order  of  the  Presi- 
dent of  the  Tribunal  of  Commerce  of  First  Instance,  or  the 
Justice  of  the  Peace  of  the  Arrondissement,  in  case  of  the 
absence  of  a  Tribunal  in  the  locality  in  which  are  found  the 
goods  that  are  to  be  described  or  seized. 

The  order  shall  be  made  following  a  simple  petition,  and 
after  the  presentation  of  the  proces-verbal  evidencing  that  the 
deposit  of  the  mark  has  been  effected. 

The  order  may,  if  such  be  necessary,  comprise  also  the 
nomination  of  an  expert  who  shall  assist  the  bailiff  in  the 
description  that  he  is  to  make. 

If  the  complainant  demands  that  the  goods  be  seized,  the 
judge  may  require  of  him  a  bond  that  must  be  deposited  before 
proceeding  to  the  seizure  of  the  goods. 

A  copy  of  the  order  of  the  Tribunal  and  of  the  act  evidenc- 
ing the  deposit  of  the  bond  shall  be  left  with  the  owner  of  the 


RUMANIA  769 

goods  described  or  seized,  all  this  under  penalty  of  nullity  and 
of  damages  and  injuries  against  the  bailiff. 

ART.  24.  In  the  case  in  which  the  complainant  shall  not 
have  brought  action,  either  civil  or  criminal,  within  a  term  of 
twenty  days,  the  description  or  the  seizure  shall  be  void  at  law, 
without  prejudice  to  damages  and  injuries  or  complaint  before 
the  Criminal  Courts. 

TITLE  V 

GENERAL  AND  TRANSITORY  PROVISIONS 

ART.  25.  There  shall  not  be  imported  into  Rumania  any 
foreign  products  bearing  a  mark  or  the  indication  of  the  name 
or  of  the  place  of  a  Rumanian  factory;  such  products  shall  be 
excluded  from  transit  and  storage  and  may  be  seized  at  any 
place  in  which  they  shall  be  found,  either  by  the  Customs 
Administration  or  as  the  result  of  a  demand  of  the  Public 
Ministry  or  of  a  claim  by  the  party  injured. 

In  the  case  in  which  the  goods  shall  be  seized  by  the  Cus- 
toms Administration,  the  proces-verbal  that  evidences  this  act 
shall  be  forwarded  directly  to  the  Public  Ministry. 

The  term,  during  which  the  action  provided  for  by  Art.  24 
must  be  brought,  under  penalty  of  nullity  of  the  seizure,  whether 
it  originate  from  the  injured  party,  or  whether  it  originate  from 
the  Public  Ministry,  is  fixed  at  two  months. 

The  provisions  of  Art.  19  shall  be  applicable  also  to  goods 
seized  by  virtue  of  the  present  article. 

ART.  26.  All  the  provisions  of  the  present  law  shall  be 
applicable  to  wines,  spirits  and  other  beverages,  to  livestock, 
to  grains,  flour,  and,  in  general,  to  all  products  of  agriculture. 

ART.  27.  All  manufacturers,  merchants,  or  agrarians,  that 
possessed  marks  before  the  promulgation  of  this  law  may  ac- 
quire the  right  of  exclusive  ownership  as  to  these  marks  only 
after  this  law  shall  have  become  effective. 

ART.  28.  To  this  end,  there  is  granted  to  them  a  term  of 
three  months,  counted  from  the  coming  into  effect  of  the  law, 
on  condition  that  each  of  those  that  desire  to  become  owners  of 
the  mark  that  they  have  adopted  have  it  registered  within  the 
term  stipulated. 

At  the  same  time  there  is  granted  to  these  manufacturers, 
merchants  or  agrarians  that  shall  make  applications  for  regis- 
tration within  the  term  fixed  in  the  first  paragraph  of  this  arti- 
cle priority  over  those  that  shall  have  made  their  application 
before  them,  but  who  did  not  possess  such  mark  before  the 
promulgation  of  the  present  law. 

ART.  29.    If  it  happens  that,  before  the  promulgation  of 


770  EUMANIA 

this  law,  several  persons  shall  have  had  the  same  mark,  the 
exclusive  right  to  this  mark  shall  be  attributed  to  the  one  of  them 
that  shall  have  applied  for  registration  within  the  term  fixed 
by  Art.  28,  and  who  shall  be  able  to  prove  by  documentary 
evidence  that  he  has  made  use  of  this  mark  prior  to  the  others. 

In  case  of  dispute,  the  question  shall  be  submitted  to  the 
Tribunal  of  Commerce,  which  shall  decide,  after  having  con- 
sulted the  documents  relative  to  the  time  since  which  each  of 
the  applicants  has  been  in  possession  of  the  mark  contested. 

When  none  of  them  can  prove  with  documentary  evidence 
that  he  is  the  oldest  possessor  of  the  mark,  drawing  by  lot 
will  decide  among  the  claimants. 

ART.  30.  For  marks  that  shall  be  registered  after  the  term 
fixed  by  Art.  28,  the  claim  of  priority  may  no  longer  be  availed 
of  if  the  claimants  have  proven  with  documentary  evidence  that 
they  have  possessed  this  mark  before  the  promulgation  of  the 
present  law. 

ART.  31.  The  present  law  shall  become  of  effect  one  month 
after  publication  in  the  Moniteur  of  the  decree  of  promulgation. 

A  public  administrative  regulation  will  determine  the  for- 
malities to  be  fulfilled  for  the  deposit  and  the  publication  of 
marks,  and  all  other  measures  necessary  for  the  execution  of 
the  law. 

ART.  32.  All  prior  provisions  contrary  to  the  present  law 
are  and  shall  remain  abrogated. 


RUSSIA 

Russia  at  the  present  time  has  no  trade  mark  law.  (The 
Russian  law  was  that  of  February  26/March  9,  1896,  as  con- 
tained in  and  has  been  adopted  by  Esthonia  with  slight  modifica- 
tion, which  see.) 


ST.  LUCIA 
COMMERCIAL  CODE,  1916 

TITLE  X 
PATENTS,  DESIGNS  AND  TRADE  MARKS* 


PART  III 
TRADE  MARKS 


CHAPTER  I 

REGISTBABLE  TRADE  MARKS 
Trade  mark  must  be  for  particular  goods 

672.  A  trade  mark  must  be  registered  in  respect  of  par- 
ticular goods  or  classes  of  goods. 

Registrable  trade  marks 

673.  A  registrable  trade  mark  must  contain  or  consist  of 
at  least  one  of  the  following  essential  particulars : 

(1)  The  name  of  a  company,  individual,  or  firm  repre- 
sented in  a  special  or  particular  manner; 

(2)  The  signature  of  the  applicant  for  registration  or  some 
predecessor  in  his  business; 

(3)  An  invented  word  or  invented  words; 

(4)  A  word  or  words  having  no  direct  reference  to  the 
character  or  quality  of  the  goods,  and  not  being  according  to 
its  ordinary  signification  a  geographical  name  or  a  surname; 

(5)  Any  other  distinctive  mark,  but  a  name,  signature,  or 
word  or  words,  other  than  such  as  fall  within  the  descriptions 
in  the  above  paragraphs  (1),  (2),  (3),  and  (4),  shall  not,  except 
by  order  of  the  Attorney- General  or  the  Court,  be  deemed  a 
distinctive  mark; 

Provided  always  that  any  special  or  distinctive  word  or 
words,  letter,  numeral,  or  combination  of  letters  or  numerals 
used  as  a  trade  mark  by  the  applicant  or  his  predecessors  in 
business  before  the  commencement  of  this  Code,  which  has  con- 
tinued to  be  used  (either  in  its  original  form  or  with  additions  or 
alterations  not  substantially  affecting  the  identity  of  the  same) 
down  to  the  date  of  the  application  for  registration  shall  be 
registrable  as  a  trade  mark  under  this  Title. 

*  Matter  not  relating  to  trade  marks  omitted. 


ST.  LUCIA  773 

For  the  purposes  of  this  Article  "distinctive"  shall  mean 
adapted  to  distinguish  the  goods  of  the  proprietor  of  the  trade 
mark  from  those  of  other  persons. 

In  determining  whether  a  trade  mark  is  so  adapted,  the 
tribunal  may,  in  the  case  of  a  trade  mark  in  actual  use,  take  into 
consideration  the  extent  to  which  such  user  has  rendered  such 
trade  mark  in  fact  distinctive  for  the  goods  with  respect  to 
which  it  is  registered  or  proposed  to  be  registered. 
Coloured  trade  marks 

674.  A  trade  mark  may  be  limited  in  whole  or  in  part  to 
one  or  more  specified  colours,  and  in  such  case  the  fact  that  it 
is  so  limited  shall  be  taken  into  consideration  by  any  tribunal 
having  to  decide  on  the  distinctive  character  of  such  trade  mark. 
If  and  so  far  as  a  trade  mark  is  registered  without  limitation 
of  colour  it  shall  be  deemed  to  be  registered  for  all  colours. 

Restriction  on  registration 

675.  It  shall  not  be  lawful  to  register  as  a  trade  mark  or 
part  of  a  trade  mark  any  matter  the  use  of  which  would  by 
reason  of  its  being  calculated  to  deceive  or  otherwise  be  disen- 
titled to  protection  in  a  Court  of  Justice,  or  would  be  contrary 
to  law  or  morality,  or  any  scandalous  design. 


CHAPTEE  II 

REGISTRATION  OF  TRADE  MARKS 

Application  for  registration 

676.  (1)  Any  person  claiming  to  be  the  proprietor  of  a 
trade  mark  who  is  desirous  of  registering  the  same  must  apply 
in  writing  to  the  Registrar  in  the  prescribed  manner. 

(2)  Subject  to  the  provisions  of  this  Title  the  Registrar 
may  refuse  such  application,  or  may  accept  it  absolutely  or 
subject  to  conditions,  amendments,  or  modifications. 

(3)  In  case  of  any  such  refusal  or  conditional  acceptance 
the  Registrar  shall,  if  required  by  the  applicant,  state  in  writing 
the  grounds  of  his  decision  and  the  materials  used  by  him  in 
arriving  at  the  same,  and  such  decision  shall  be  subject  to 
appeal  to  the  Attorney-General  or  to  the  Court  at  the  option  of 
the  applicant. 

(4)  An  appeal  under  this  Article  shall  be  made  in  the 
prescribed  manner,  and  on  such  appeal  the  Attorney-General 
or  the  Court,  as  the  case  may  be,  shall,  if  required,  hear  the 
applicant  and  the  Registrar,  and  shall  make  an  order  determin- 
ing whether,  and  subject  to  what  conditions,  amendments,  or 
modifications,  if  any,  the  application  is  to  be  accepted. 


774  ST.  LUCIA 

(5)  Appeals  under  this  Article  shall  be  heard  on  the  mate- 
rials so  stated  by  the  Registrar  to  have  been  used  by  him  in 
arriving  at  his  decision,  and  no  further  grounds  of  objection 
to  the  acceptance  of  the  application  shall  be  allowed  to  be  taken 
by  the  Registrar,  other  than  those  stated  by  him,  except  by  leave 
of   the    tribunal    hearing    the    appeal.     Where    any    further 
grounds  of  objection  are  taken  the  applicant  shall  be  entitled  to 
withdraw  his  application  without  payment  of  costs  on  giving 
notice  as  prescribed. 

(6)  The  Registrar  or  the  Attorney-General  or  the  Court, 
as  the  case  may  be,  may  at  any  time,  whether  before  or  after 
acceptance,  correct  any  error  in  or  in  connection  with  the  appli- 
cation, or  may  permit  the  applicant  to  amend  his  application 
upon  such  terms  as  they  may  think  fit. 

Advertisement  of  application 

677.  When  an  application  for  registration  of  a  trade  mark 
has  been  accepted,  whether  absolutely  or  subject  to  conditions, 
the  Registrar  shall,  as  soon  as  may  be  after  such  acceptance, 
cause  the  application  as  accepted  to  be  advertised  in  the  pre- 
scribed manner.    Such  advertisement  shall  set  forth  all  condi- 
tions subject  to  which  the  application  has  been  accepted. 

Opposition  to  registration 

678.  (1)  Any  person  may,  within  the  prescribed  time  from 
the  date  of  the  advertisement  of  an  application  for  the  regis- 
tration of  a  trade  mark,  give  notice  to  the  Registrar  of  opposi- 
tion to  such  registration. 

(2)  Such  notice  shall  be  given  in  writing  in  the  prescribed 
manner,   and   shall  include   a   statement   of  the  grounds   of 
opposition. 

(3)  The  Registrar  shall  send  a  copy  of  such  notice  to  the 
applicant,  and  within  the  prescribed  time  after  the  receipt  of 
such  notice,  the  applicant  shall  send  to  the  Registrar,  in  the 
prescribed  manner,  a  counter-statement  of  the  grounds  on  which 
he  relies  for  his  application,  and,  if  he  does  not  do  so,  he  shall 
be  deemed  to  have  abandoned  his  application. 

(4)  If  the  applicant  sends  such  counter-statement,  the  Reg- 
istrar shall  furnish  a  copy  thereof  to  the  persons  giving  notice 
of  opposition,  and  shall,  after  hearing  the  parties,  if  so  required, 
and  considering  the  evidence,  decide  whether,  and  subject  to 
what  conditions,  registration  is  to  be  permitted. 

(5)  The  decision  of  the  Registrar  shall  be  subject  to  appeal 
to  the  Court  or,  with  the  consent  of  the  parties,  to  the  Attorney- 
General. 

(6)  An  appeal  under  this  Article  shall  be  made  in  the  pre- 
scribed manner,  and  on  such  appeal  the  Attorney-General  or 


ST.  LUCIA  775 

the  Court,  as  the  case  may  be,  shall,  if  required,  hear  the  parties 
and  the  Registrar,  and  shall  make  an  order  determining 
whether,  and  subject  to  what  conditions,  if  any,  registration  is 
to  be  permitted. 

(7)  On  the  hearing  of  any  such  appeal  any  party  may 
either  in  the  manner  prescribed  or  by  special  leave  of  the 
tribunal  bring  forward  further  material  for  the  consideration 
of  the  tribunal. 

(8)  In  proceedings  under  this  Article  no  further  grounds 
of  objection  to  the  registration  of  a  trade  mark  shall  be  allowed 
to  be  taken  By  the  opponent  or  the  Registrar  other  than  those 
stated  by  the  opponent  as  hereinabove  provided  except  by  leave 
of  the  tribunal  hearing  the  appeal.    Where  any  further  grounds 
of  objection  are  taken  the  applicant  shall  be  entitled  to  with- 
draw his  application  without  payment  of  the  costs  of  the  op- 
ponent on  giving  notice  as  prescribed. 

(9)  In  any  appeal  under  this  Article,  the  tribunal  may, 
after  hearing  the  Registrar,  permit  the  trade  mark  proposed  to 
be  registered  to  be  modified  in  any  manner  not  substantially 
affecting  the  identity  of  such  trade  mark,  but  in  such  case  the 
trade  mark  as  so  modified  shall  be  advertised  in  the  prescribed 
manner  before  being  registered. 

(10)  The  Registrar,  or,  in  the  case  of  an  appeal  to  the  At- 
torney-General, the  Attorney-General  shall  have  power  in  pro- 
ceedings under  this  Article  to  award  to  any  party  such  costs  as 
they  may  consider  reasonable,  and  to  direct  how  and  by  what 
parties  they  are  to  be  paid. 

(11)  If  a  party  giving  notice  of  opposition  or  of  appeal 
neither  resides  nor  carries  on  business  'in  the  Colony,  the 
tribunal  may  require  such  party  to  give  security  for  costs  of 
the  proceedings  before  it  relative  to  such  opposition  or  appeal, 
and  in  default  of  such  security  being  duly  given  may  treat  the 
opposition  or  appeal  as  abandoned. 

Disclaimers 

679.  If  a  trade  mark  contains  parts  not  separately  regis- 
tered by  the  proprietor  as  trade  marks,  or  if  it  contains  matter 
common  to  the  trade  or  otherwise  of  a  non-distinctive  character, 
the  Registrar  or  the  Attorney-General  or  the  Court,  in  deciding 
whether  such  trade  mark  shall  be  entered  or  shall  remain  upon 
the  register,  may  require,  as  a  condition  of  its  being  upon  the 
register,  that  the  proprietor  shall  disclaim  any  right  to  the 
exclusive  use  of  any  part  or  parts  of  such  trade  mark,  or  of  all 
or  any  portion  of  such  matter,  to  the  exclusive  use  of  which 
they  hold  him  not  to  be  entitled,  or  that  he  shall  make  such 
other  disclaimer  as  they  may  consider  needful  for  the  purpose 


776  ST.  LUCIA 

of  defining  his  rights  under  such  registration :  Provided  always 
that  no  disclaimer  upon  the  register  shall  affect  any  rights  of 
the  proprietor  of  a  trade  mark  except  such  as  arise  out  of  the 
registration  of  the  trade  mark  in  respect  of  which  the  disclaimer 
is  made. 

Date  of  registration 

680.  When  an  application  for  registration  of  a  trade  mark 
has  been  accepted  and  has  not  been  opposed,  and  the  time  for 
notice  of  opposition  has  expired,  or  having  been  opposed  the 
opposition  has  been  decided  in  favour  of  the  applicant,  the 
Registrar  shall,  unless  the  Attorney-General  otherwise  direct, 
register  the  said  trade  mark,  and  the  trade  mark,  when  regis- 
tered, shall  be  registered  as  of  the  date  of  the  application  for 
registration,  and  such  date  shall  be  deemed  for  the  purposes  of 
this  Title  to  be  the  date  of  registration. 

Certificate  of  registration 

681.  On  the  registration  of  a  trade  mark  the  Registrar 
shall  issue  to  the  applicant  a  certificate  in  the  prescribed  form 
of  the  registration  of  such  trade  mark  under  the  hand  of  the 
Registrar,  and  sealed  with  the  seal  of  the  Colony. 

Non-completion  of  registration 

682.  Where  registration  of  a  trade  mark  is  not  completed 
within  twelve  months  from  the  date  of  the  application  by  reason 
of  default  on  the  part  of  the  applicant,  the  Registrar  may,  after 
giving  notice  of  the  non-completion  to  the  applicant  in  writing 
in  the  prescribed  manner,  treat  the  application  as  abandoned 
unless  it  is  completed  within  the  time  specified  in  that  behalf  in 
such  notice. 


CHAPTER  III 

IDENTICAL  AND  ASSOCIATED  MARKS 
Identical  trade  marks 

683.  Except  by  order  of  the  Court  or  in  the  case  of  trade 
marks  in  use  before  the  commencement  of  this  Code,  no  trade 
mark  shall  be  registered  in  respect  of  any  goods  or  description 
of  goods  which  is  identical  with  one  belonging  to  a  different 
proprietor  which  is  already  on  the  register  with  respect  to  such 
goods  or  description  of  goods,  or  so  nearly  resembling  such  a 
trade  mark  as  to  be  calculated  to  deceive. 

Rival  claims  to  identical  marks 

684.  Where  each  of  several  persons  claims  to  be  proprietor 
of  the  same  trade  mark,  or  of  nearly  identical  trade  marks  in 
respect  of  the  same  goods  or  description  of  goods,  and  to  be 


ST.  LUCIA  777 

registered  as  such  proprietor,  the  Registrar  may  refuse  to 
register  any  of  them  until  their  rights  have  been  determined  by 
the  Court,  or  have  been  settled  by  agreement  in  a  manner  ap- 
proved by  him  or  (on  appeal)  by  the  Attorney-General. 

Concurrent  user 

685.  In  case  of  honest  concurrent  user  or  of  other  special 
circumstances  which,  in  the  opinion  of  the  Court,  make  it  proper 
so  to  do,  the  Court  may  permit  the  registration  of  the  same 
trade  mark,  or  of  nearly  identical  trade  marks,  for  the  same 
goods  or  description  of  goods  by  more  than  one  proprietor  sub- 
ject to  such  conditions  and  limitations,  if  any,  as  to  mode  or 
place  of  user  or  otherwise,  as  it  may  think  it  right  to  impose. 

ASSOCIATED  TRADE  MARKS 

686.  If  application  be  made  for  the  registration  of  a  trade 
mark  so  closely  resembling  a  trade  mark  of  the  applicant 
already  on  the  register  for  the  same  goods  or  description  of 
goods  as  to  be  calculated  to  deceive  or  cause  confusion  if  used 
by  a  person  other  than  the  applicant,  the  tribunal  hearing  the 
application  may  require  as  a  condition  of  registration  that  such 
trade  marks  shall  be  entered  on  the  register  as  associated  trade 
marks. 

Combined  trade  marks 

687.  If  the  proprietor  of  a  trade  mark  claims  to  be  entitled 
to  the  exclusive  use  of  any  portion  of  such  trade  mark  sepa- 
rately he  may  apply  to  register  the  same  as  separate  trade 
marks.    Each  such  separate  trade  mark  must  satisfy  all  the 
conditions  and  shall  have  all  the  incidents  of  an  independent 
trade  mark,  except  that  when  registered  it  and  the  trade  mark 
of  which  it  forms  a  part  shall  be  deemed  to  be  associated  trade 
marks  and  shall  be  entered  on  the  register  as  such,  but  the  user 
of  the  whole  trade  mark  shall  for  the  purpose  of  this  Title  be 
deemed  to  be  also  a  user  of  such  registered  trade  marks  belong- 
ing to  the  same  proprietor  as  it  contains. 

Series  of  trade  marks 

688.  When  a  person  claiming  to  be  the  proprietor  of  sev- 
eral trade  marks  for  the  same  description  of  goods  which,  while 
resembling  each  other  in  the  material  particulars  thereof,  yet* 
differ  in  respect  of — 

(a)  Statements  of  the  goods  for  which  they  are  respectively 
used  or  proposed  to  be  used ;  or 

(b)  Statements  of  number,  price,  quality,  or  names  of 
places;  or 

(c)  Other  matter  of  a  non-distinctive  character  which  does 
not  substantially  affect  the  identity  of  the  trade  mark ;  or 


778  ST.  LUCIA 

(d)  Colour;  seeks  to  register  such  trade  marks,  they  may 
be  registered  as  a  series  in  one  registration.     All  the  trade 
marks  in  a  series  of  trade  marks  so  registered  shall  be  deemed 
to  be,  and  shall  be  registered  as,  associated  trade  marks. 
Assignment  and  user  of  associated  trade  marks 

689.  Associated  trade  marks  shall  be  assignable  or  trans- 
missible only  as  a  whole  and  not  separately,  but  they  shall  for 
all  other  purposes  be  deemed  to  have  been  registered  as  separate 
trade  marks.    Provided  that  where  under  the  provisions  of  this 
Title  user  of  a  registered  trade  mark  is  required  to  be  proved 
for  any  purpose,  the  tribunal  may  if  and  so  far  as  it  shall  think 
right  accept  user  of  an  associated  registered  trade  mark,  or  of 
the  trade  mark  with  additions  or  alterations  not  substantially 
affecting  its  identity,  as  an  equivalent  for  such  user. 

ENGLISH  TRADE  MARKS 

690.  The  proprietor  of  any  trade  mark  registered  in  Eng- 
land may,  if  such  trade  mark  is  not  already  registered  in  the 
Colony  in  respect  of  the  same  or  similar  goods,  obtain  the  regis- 
tration of  such  trade  mark  by  lodging  with  the  Registrar  a 
sealed  and  certified  copy  of  the  entry  of  such  trade  mark  in  the 
English  Register.    It  shall  not  be  necessary  to  advertise  the 
application  for  registration. 

SPECIAL  TRADE  MARKS 
Standardisation 

691.  Where  any  association  or  person  undertakes  the  ex- 
amination of  any  goods  in  respect  of  origin,  material,  mode  of 
manufacture,  quality,  accuracy,  or  other  characteristic,  and 
certifies  the  result  of  such  examination  by  mark  used  upon  or 
in  connection  with  such  goods,  the  Attorney-General  may,  if  he 
shall  judge  it  to  be  to  the  public  advantage,  permit  such  asso- 
ciation or  person  to  register  such  mark  as  a  trade  mark  in 
respect  of  such  goods,  whether  or  not  such  association  or  person 
be  a  trading  association  or  trader  or  possessed  of  a  goodwill 
in  connection  with  such  examination  and  certifying.    When  so 
registered  such  trade  mark  shall  be  deemed  in  all  respects  to 
be  a  registered  trade  mark,  and  such  association  or  person  to 
be  the  proprietor  thereof,  save  that  such  trade  mark  shall  be 
transmissible  or  assignable  only  by  permission  of  the  Attorney- 
General. 


Assignment  and  transmission  of  trade  marks 
692.    A  trade  mark  when  registered  shall  be  assigned  and 


ST.  LUCIA  779 

transmitted  only  in  connection  with  the  goodwill  of  the  business 
concerned  in  the  goods  for  which  it  has  been  registered  and  shall 
be  determinable  with  that  goodwill.  But  nothing  in  this  Article 
contained  shall  be  deemed  to  affect  the  right  of  the  proprietor 
of  a  registered  trade  mark  to  assign  the  right  to  use  the  same 
in  any  place,  outside  the  jurisdiction  in  connection  with  any 
goods  for  which  it  is  registered  together  with  the  goodwill  of 
the  business  therein  in  such  goods. 

Apportionment  of  marks  on  dissolution  of  partnership 

693.  In  any  case  where  from  any  cause,  whether  by  reason 
of  dissolution  of  partnership  or  otherwise,  a  person  ceases  to 
carry  on  business,  and  the  goodwill  of  such  person  does  not 
pass  to  one  successor  but  is  divided,  the  Registrar  may  (subject 
to  the  provisions  of  this  Title  as  to  associated  trade  marks), 
on  the  application  of  the  parties  interested,  permit  an  appor- 
tionment of  the  registered  trade  marks  of  the  person  among  the 
persons  in  fact  continuing  the  business,  subject  to  such  condi- 
tions and  modifications,  if  any,  as  he  may  think  expedient. 

Duration  of  registration 

694.  The  registration  of  a  trade  mark  shall  be  for  a  period 
of  fourteen  years,  but  may  be  renewed  from  time  to  time  in 
accordance  with  the  provisions  of  this  Title. 

Renewal  of  registration 

695.  The  Registrar  shall,  on  application  made  by  the  regis- 
tered proprietor  of  a  trade  mark  in  the  prescribed  manner  and 
within  the  prescribed  period,  renew  the  registration  of  such 
trade  mark  for  a  period  of  fourteen  years  from  the  expiration 
of  the  original  registration  or  of  the  last  renewal  of  registra- 
tion, as  the  case  may  be,  which  date  is  herein  termed  "the  ex- 
piration of  the  last  registration." 

Procedure  on  expiry  of  period  of  registration 

696.  At  the  prescribed  time  before  the  expiration  of  the 
last  registration  of  a  trade  mark,  the  Registrar  shall  send  notice 
in  the  prescribed  manner  to  the  registered  proprietor  at  his 
registered  address  of  the  date  at  which  the  existing  registration 
will  expire  and  the  conditions  as  to  payment  of  fees  and  other- 
wise upon  which  a  renewal  of  such  registration  may  be  obtained, 
and  if  at  the  expiration  of  the  time  prescribed  in  that  behalf 
such  conditions  have  not  been  duly  complied  with,  the  Registrar 
may  remove  such  trade  mark  from  the  register,  subject  to  such 
conditions  (if  any)  as  to  its  restoration  to  the  register  as  may 
be  prescribed. 

Status  of  unrenewed  trade  marks 

697.  Where  a  trade  mark  has  been  removed  from  the  reg- 


780  ST.  LUCIA 

ister  for  non-payment  of  the  fee  for  renewal,  such  trade  mark 
shall,  nevertheless,  for  the  purpose  of  any  application  for  regis- 
tration during  one  year  next  after  the  date  of  such  removal, 
be  deemed  to  be  a  trade  mark  which  is  already  registered,  unless 
it  is  shown  to  the  satisfaction  of  the  Eegistrar  that  there  had 
been  no  bona  fide  trade  user  of  such  trade  mark  during  the 
two  years  immediately  preceding  such  removal. 
Removed  for  non-user 

698.  It  shall  be  a  ground  for  the  removal  of  a  trade  mark 
from  the  register  that  such  trade  mark  was  not  intended  to  be 
used  or  has  not  in  fact  been  used  in  connection  with  the  goods 
for  which  it  is  registered,  either  since  the  date  of  registration, 
or  for  five  years  preceding  the  petition  for  removal,  unless  it 
appears  to  the  Court  that  such  non-user  arose  from  special  cir- 
cumstances and  not  from  the  intention  not  to  use  or  to  abandon 
the  use  of  such  trade  mark  in  connection  with  such  goods. 

CHAPTER  V 

EFFECT  OF  REGISTRATION 
Powers  of  Registered  Proprietor 

699.  (1)  The  person  for  the  time  being  entered  in  the 
register  as  proprietor  of  a  trade  mark  shall,  subject  to  any 
rights  appearing  from  such  register  to  be  vested  in  any  other 
person,  have  power  to  assign  the  same,  and  to  give  effectual 
receipts  for  any  consideration  for  such  assignment. 

(2)  Any  equities  in  respect  of  a  trade  mark  may  be  en- 
forced in  like  manner  as  in  respect  of  any  other  personal 
property. 

Rights  of  proprietor  of  trade  mark 

700.  The  registration  of  a  person  as  proprietor  of  a  trade 
mark  shall,  if  valid,  give  to  such  person  the  exclusive  right  to 
the  use  of  such  trade  mark  upon  or  in  connection  with  the  goods 
in  respect  of  which  it  is  registered.    Provided  always  that  where 
two  or  more  persons  are  registered  proprietors  of  the  same  (or 
substantially  the  same)  trade  mark  in  respect  of  the  same  goods 
no  rights  of  exclusive  user  of  such  trade  mark  shall  (except 
so  far  as  their  respective  rights  shall  have  been  defined  by  the 
Court)  be  acquired  by  any  one  of  such  persons  as  against  any 
other  by  the  registration  thereof,  but  each  of  such  persons  shall 
otherwise  have  the  same  rights  as  if  he  were  the  sole  registered 
proprietor  thereof. 

Registration  to  be  prima  facie  evidence  of  validity 

701.  In  all  legal  proceedings  relating  to  a  registered  trade 


ST.  LUCIA  781 

mark  the  fact  that  a  person  is  registered  as  proprietor  of  such 
trade  mark  shall  be  prima  facie  evidence  of  the  validity  of  the 
original  registration  of  such  trade  mark  and  of  all  subsequent 
assignments  and  transmissions  of  the  same. 

Registration  to  be  conclusive  after  seven  years 

702.  In  all  legal  proceedings  relating  to  a  registered  trade 
mark  the  original  registration  of  such  trade  mark  shall  after 
the  expiration  of  seven  years  from  date  of  such  original  regis- 
tration (or  seven  years  from  the  commencement  of  this  Code, 
whichever  shall  last  happen)  be  taken  to  be  valid  in  all  respects 
unless  such  original  registration  was  obtained  by  fraud,  or 
unless  the  trade  mark  offends  against  the  provisions  of  Article 
675  of  this  Code: 

Provided  that  nothing  herein  shall  entitle  the  proprietor  of 
a  registered  trade  mark  to  interfere  with  or  restrain  the  user 
by  any  person  of  a  similar  trade  mark  upon  or  in  connection 
with  goods  upon  or  in  connection  with  which  such  person  has, 
by  himself  or  his  predecessors  in  business,  continuously  used 
such  trade  mark  from  a  date  anterior  to  the  user  of  the  first- 
mentioned  trade  mark  by  the  proprietor  thereof  or  his  predeces- 
sors in  business,  or  to  object  (on  such  user  being  proved)  to 
such  person  being  put  upon  the  register  for  such  similar  trade 
mark  in  respect  of  such  goods  in  case  of  concurrent  user. 
Unregistered  trade  mark 

703.  No  persons  shall  be  entitled  to  institute  any  proceed- 
ing to  prevent  or  to  recover  damages  for  the  infringement  of 
an  unregistered  trade  mark  unless  such  trade  mark  was  in  use 
before  the  commencement  of  this  Code,  and  has  been  refused 
registration  under  this  Title.    The  Registrar  may,  on  request, 
grant  a  certificate  that  such  registration  has  been  refused. 

Infringement 

704.  In  an  action  for  the  infringement  of  a  trade  mark, 
the  Court  may  admit  evidence  of  the  usages  of  the  trade  in 
respect  to  the  get-up  of  the  goods  for  which  the  trade  mark  is 
registered,  and  of  any  trade  marks  or  get-up  legitimately  used 
in  connection  with  such  goods  by  other  persons. 

User  of  name,  address  or  description  of  goods 

705.  No  registration  made  hereunder  shall  interfere  with 
any  bona  fide  use  by  a  person  of  his  own  name  or  place  of 
business,  or  that  of  any  of  his  predecessors  in  business,  or  the 
use  by  any  person  of  any  bona  fide  description  of  the  character 
or  quality  of  his  goods. 

"Passing-off"  action 

706.  Nothing  herein  contained  shall  be  deemed  to  affect 


782  ST.  LUCIA 

rights  of  action  against  any  person  for  passing  off  goods  as 
those  of  another  person  or  the  remedies  in  respect  thereof. 


PART  IV 

GENERAL 

CHAPTER  I* 

INTERNATIONAL  AND  INTERCOLONIAL  ARRANGEMENTS 
707.  (1)  If  His  Majesty  is  pleased,  by  Order-in-Council, 
to  apply  the  provisions  of  section  91  of  the  Patents  and  Designs 
Act,  1907f,  to  this  Colony,  then  any  person  who  has  applied  for 
protection  for  any  .  .  .  trade  mark  in  the  United  Kingdom 
or  in  any  foreign  state  with  which  His  Majesty  has  made  ar- 
rangement under  the  said  section,  or  his  legal  representative  or 
assignee,  shall  be  entitled  to  ...  registration  of  his  .  .  . 
trade  mark  hereunder  in  priority  to  other  applicants;  and  the 
.  .  .  registration  shall  have  the  same  date  as  the  date  of 
the  application  in  the  United  Kingdom  or  such  foreign  state. 
Provided  that: 

(a)  That  application  is  made    ...    in  the  case  of  a 
.    .    .   trade  mark  within  four  months  from  the  application 
for  protection  in  the  United  Kingdom  or  in  such  foreign  state ; 
and 

(b)  Nothing  in  this  Article  shall  entitle  the   .    .    .   pro- 
prietor of  the  .  .  .  trade  mark  to  recover  damages  for  infringe- 
ments happening  prior  to  the  actual  date  on  which  his  .    .    . 
trade  mark  is  registered,  in  this  Colony. 

(2)  The  .  .  .  registration  of  a  trade  mark  .  .  .  shall  not 
be  invalidated 

(c)  In  the  case  of  a  trade  mark,  by  reason  only  of  the  use 
of  the  trade  mark  in  this  Colony  during  the  period  specified 
herein  as  that  within  which  the  application  may  be  made. 

(3)  The  application  for  .    .    .  the  registration  of  a  trade 
mark  under  this  Article  must  be  made  in  the  same  manner  as 
an  ordinary  application  under  this  Title: 

Provided  that: 

(b)  In  the  case  of  trade  marks,  any  trade  mark  the  regis- 
tration of  which  has  been  duly  applied  for  in  the  country  of 
origin  may  be  registered  under  the  third  part  of  this  Title. 

(4)  The  provisions  of  this  Article  shall  apply  only  in  the 
case  of  those  foreign  states  with  respect  to  which  His  Majesty 

*  Matter  relating  to  patents  and  designs  is  omitted. 
fFor  text  of  provisions,  see  Great  Britain. 


ST.  LUCIA  783 

by  Order-in-Council  declares  them  to  be  applicable,  and  so 
long  only  in  the  case  of  each  state  as  the  Order-in-Council  con- 
tinues in  force  with  respect  to  that  state. 

(5)  Where  it  is  made  to  appear  to  the  Governor  in  Council 
that  the  legislature  of  any  British  possession  has  made  satis- 
factory provision  for  the  protection  of  ...  trade  marks 
.  .  .  registered  in  this  Colony,  the  Governor  in  Council  may 
apply  the  provisions  of  this  Article  to  that  possession,  with 
such  variations  or  additions,  if  any,  as  may  seem  fit. 

CHAPTER  II 

DEFINITIONS 
Registrar  and  Office 

708.  The  Registrar  of  the  Royal  Court,  or  such  other 
officer  as  the  Governor  may  appoint,  shall  be  the  Registrar  of 
Patents,  Designs,  and  Trade  Marks,  and  the  office  of  the  Regis- 
trar of  the  Royal  Court,  or  such  other  office  as  the  Governor 
may  prescribe,  shall  be  the  Registry  of  Patents,  Designs  and 
Trade  Marks. 

Interpretation 

709.  In  this  Title,  unless  the  context  otherwise  requires : 

•  ••••»•••• 

A  "mark"  includes  a  device,  brand,  heading,  label,  ticket, 
name,  signature,  word,  letter,  numeral,  or  any  combination 
thereof. 

A  "trade  mark"  means  a  mark  used  or  proposed  to  be 
used  upon  or  in  connection  with  goods  for  the  purpose  of  indi- 
cating that  they  are  the  goods  of  the  proprietor  of  such  trade 
mark  by  virtue  of  manufacture,  selection,  certification,  dealing 
with,  or  offering  for  sale. 

A  "registrable  trade  mark"  means  a  trade  mark  which 
is  capable  of  registration  under  the  third  part  of  this  Title. 

A  "registered  trade  mark"  means  a  trade  mark  which  is 
actually  upon  the  register. 

"Prescribed"  means,  in  relation  to  proceedings  before  the 
Court,  prescribed  by  rules  of  Court ;  in  other  oases,  prescribed 
by  the  provisions  of  this  Title  or  of  any  rules  appended  to  or 
made  thereunder. 

"The  Court"  means  the  Royal  Court. 

CHAPTER  III 

THE  REGISTER 

710.  There  shall  be  kept  at  the  Registry  for  the  purposes 


784  ST.  LUCIA 

of  this  Title  a  book  called  the  Register  of  Patents,  Designs,  and 
Trade  Harks. 

All  registered  trade  marks  with  the  names  and  addresses 
of  their  proprietors,  notifications  of  assignments  and  transmis- 
sions, disclaimers,  conditions,  limitations  and  all  matters  pre- 
scribed in  relation  to  trade  marks  shall  also  be  entered  in  a 
separate  section  of  the  register. 

•  ••••*•••• 

No  trust  to  be  entered 

711.  There  shall  not  be  entered  in  the  register  any  notice 
of  any  trust  expressed,  implied,  or  constructive,  nor  shall  any 
such  notice  be  receivable  by  the  Registrar. 

Inspection  of  and  extract  from  register 

712.  The  register  shall  during  the  prescribed  hours  be 
open  to  the  inspection  of  the  public;  certified  copies  of  any 
entry  in  the  register  shall  be  given  to  any  person  requiring 
the  same  on  payment  of  the  prescribed  fee;  and  it  shall  be  kept 
generally  in  accordance  with  the  regulations  set  forth  in  the 
Code  of  Civil  Procedure  in  relation  to  registers  required  to  be 
kept  by  law. 

Publication  of  annual  list 

713.  The  Registrar  shall  cause  to  be  published  at  the  end 
of  every  financial  year  a  list  of  all  ...  trade  marks  regis- 
tered during  the  preceding  year,  and  any  further  information 
that  he  may  deem  expedient. 

Transmission  of  copies  to  Engfand 

714.  Copies  ...  of  all  published  lists  of  registered  .  .  . 
trade  marks  shall  be  transmitted  to  the  Comptroller  of  Patents, 
Designs,  and  Trade  Marks  in  England. 


CHAPTER  IV 

CORRECTION  AND  RECTIFICATION  OF  REGISTER 
Power  for  Registrar  to  correct  clerical  errors 
715.    The  Registrar  may,  on  request  in  writing  accom- 
panied by  the  prescribed  fee : 

(a)  Correct  any  clerical  error  in  or  in  connection  with  an 
application  .  .  .  for  registration  of  a  .  .  .  trade  mark. 

(b)  Cancel  the  registration  of  a  ...  trade  mark  either 
wholly  or  in  respect  of  any  particular  goods  in  connection  with 
which  the  .  .  .  trade  mark  is  registered. 

(c)  Correct  any  clerical  error  ...  in  the  name  or  address 
of  the  proprietor  of  any  .    .    .  trade  mark,  or  in  any  other 


ST.  LUCIA  785 

matter  which  is  entered  upon  the  Register  of  Patents,  Designs, 
and  Trade  Marks. 

Entry  of  assignments  and  transmissions  in  registers 

716.  (1)  "Where  a  person  becomes  entitled  by  assignment, 
transmission,  or  other  operation  of  law  to  a  ...  trade  mark, 
the  Registrar  shall  on  request  and  on  proof  of  title  to  his  satis- 
faction, register  him  as  the  proprietor  of  such  .  .  .  trade  mark. 

(4)  The  person  registered  as  the  proprietor  of  a  trade  mark 
may,  by  leave  of  the  Registrar,  add  to  or  alter  the  same  in  any 
way  not  substantially  affecting  the  identity  of  such  trade  mark. 
If  leave  be  granted,  the  trade  mark  so  altered  shall  be  adver- 
tised in  the  prescribed  manner. 

Rectification  of  registers  by  Court 

717.  (1)  The  Court  may,  on  the  application  in  the  pre- 
scribed manner  of  any  person  aggrieved  by  the  non-insertion 
in  or  omission  from  the  Register  of  Patents,  Designs  and  Trade 
Marks,  of  any  entry,  or  by  any  entry  made  in  either  such 
register  without  sufficient  cause,  or  by  any  entry  wrongly  re- 
maining in  either  such  register,  or  by  an  error  or  defect  in  any 
entry  in  either  such  register,  make  such  order  for  making, 
expunging,  or  varying  such  entry  as  it  may  think  fit. 

(2)  The  Court  may  in  any  proceedings  under  this  Article 
decide  any  question  that  it  may  be  necessary  or  expedient  to 
decide  in  connection  with  the  rectification  of  a  register. 

(3)  In  case  of  fraud  in  the  registration  or  transmission  of 
a  registered  trade  mark,  the  Registrar  may  himself  apply  to 
the  Court  under  the  provisions  of  this  Article. 

(4)  Any  order  of  the  Court  rectifying  the  register  shall 
direct  that  notice  of  the  rectification  shall  be  served  upon  the 
Registrar  in  the  prescribed  manner,  who  shall  upon  receipt  of 
such  notice  rectify  the  register  accordingly. 

Registrar  to  have  notice  of  proceeding  for  rectification 

718.  In  any  legal  proceeding  in  which  the  relief  sought 
includes  alteration  or  rectification  of  the  register,  the  Registrar 
shall  have  the  right  to  appear  and  be  heard,  and  shall  appear  if 
so  directed  by  the  court.  Unless  otherwise  directed  by  the  Court, 
the  Registrar  in  lieu  of  appearing  and  being  heard  may  submit 
to  the  Court  a  statement  in  writing  signed  by  him,  giving  par- 
ticulars of  the  proceedings  before  him  in  relation  to  the  matter 
in  issue  or  of  the  grounds  of  any  decision  given  by  him  affecting 
the  same  or  of  the  practice  of  the  office  in  like  cases,  or  of  such 
other  matters  relevant  to  the  issues,  and  within  his  knowledge 
as  such  Registrar,  as  he  shall  think  fit,  and  such  statement  shall 
be  deemed  to  form  part  of  the  evidence  in  the  proceeding. 


786  ST.  LUCIA 

COSTS 
Costs  of  proceedings  before  the  Court 

719.  In  all  proceedings  before  the  Court  under  this  Title 
the  costs  of  the  Registrar  shall  be  in  the  discretion  of  the  Court, 
but  the  Registrar  shall  not  be  ordered  to  pay  the  cost  of  any 
other  of  the  parties. 

CHAPTER  V 

OFFENCES 
Falsification  of  entries  in  register 

720.  If  any  person  makes  or  causes  to  be  made  a  false 
entry  in  the  register  kept  under  this  Title,  or  a  writing  falsely 
purporting  to  be  a  copy  of  an  entry  in  any  such  register,  or 
produces  or  tenders  or  causes  to  be  produced  or  tendered  in 
evidence  any  such  writing,  knowing  the  entry  or  writing  to  be 
false,  he  shall  be  guilty  of  a  misdemeanour. 

Unauthorised  assumption  of  Royal  Arms 

722.  If  any  person,  without  the  authority  of  His  Majesty, 
uses  in  connection  with  any  business,  trade,  calling,  or  profes- 
sion the  Royal  Arms  (or  arms  so  nearly  resembling  them  as 
to  be  calculated  to  deceive)  in  such  manner  as  to  be  calculated 
to  lead  to  the  belief  that  he  is  duly  authorized  to  use  the  Royal 
Arms,  he  shall  be  liable  on  summary  conviction  to  a  fine  not 
exceeding  twenty  pounds. 

Penalty  on  falsely  representing  a  trade  mark  as  registered 

723.  (1)  Any  person  who   represents'  a  trade  mark  as 
registered  which  is  not  so,  shall  be  liable  for  every  offence  on 
summary  conviction  to  a  fine  not  exceeding  five  pounds. 

(2)  A  person  shall  be  deemed,  for  the  purpose  of  this  enact- 
ment, to  represent  that  a  trade  mark  is  registered,  if  he  uses 
in  connection  with  the  trade  mark  the  word  "registered,"  or 
any  words  expressing  or  implying  that  registration  has  been 
obtained  for  the  trade  mark. 

CHAPTER  VI 

SUPPLEMENTAL  PROVISIONS 
Evidence 

724.  In  any  proceedings  hereunder  before  the  Attorney- 
General  or  Registrar,  the  evidence  shall  be  by  affidavit  in  the 
absence  of  directions  to  the  contrary.     In  case  any  part  of 
the  evidence  is  taken  orally,  the  Attorney-General  or  Registrar 


ST.  LUCIA  787 

shall,  in  respect  of  requiring  the  attendance  of  witnesses  and 
taking  evidence  on  oath,  be  in  the  same  position  in  all  respects 
as  an  examiner  appointed  by  the  Court. 

Extension  of  time 

725.  The  Attorney-General  may  extend  any  delay  pre- 
scribed hereunder  on  the  ground  either  that  the  applicant  does 
not  reside  in  the  Colony  or  that  it  is  difficult  to  obtain  expert 
advice  therein. 

•  *  •  •  •  •  •  •.  •  •, 

FEES 
Schedule 

728.  There  shall  be  paid  to  the  Registrar  in  respect  of  the 
several  matters  mentioned  in  the  Schedule  to  this  Title  the 
several  fees  therein  specified,  or  such  smaller  fees  as   the 
Governor  in  Council  may  from  time  to  time  direct. 

Appeals 

729.  Subject  to  Kules  of  Court,  an  appeal  from  any  order 
or  decision  made  or  given  in  an  action  for  infringement  or 
other  proceeding  before  the  Royal  Court  under  this  Title  shall 
lie  in  the  same  manner  and  subject  to  the  same  conditions  as 
an  appeal  from  any  order  or  decision  of  the  Eoyal  Court  in 
cases  within  its  ordinary  jurisdiction. 

Rules  and  forms 

730.  The  Governor  in  Council  may  make  and  prescribe 
rules  and  forms  for  carrying  into  effect  the  objects  of  this 
Title ;  but  until  such  rules  and  forms  are  made  and  prescribed, 
and  so  far  as  the  same  do  not  extend,  the  rules  and  forms  for 
the  time  being  in  force  in  England  shall  be  used  in  all  cases 
to  which  they  are  applicable ;  and  shall  be  modified  as  directed 
by  the  Registrar  to  meet  other  cases. 


ST.  VINCENT 

This  colony  has  no  proper  trade  mark  law. 
Merchandise  Marks  Ordinance,  1888,  No.  8,  substantially 
like  Great  Britain:  Merchandise  Marks  Ordinance,  which  see. 


SALVADOR 

LAW  OF  JULY  22,  1921 
CHAPTER  I 

TRADE  MARKS  AND  THEIR  OWNERSHIP 

ARTICLE  1.  There  shall  be  considered  as  a  mark  of  manu- 
facture or  of  commerce  any  sign  with  which  are  distinguished 
the  products  of  a  factory,  of  agriculture,  or  the  objects  of  a 
business. 

AST.  2.    A  mark  may  consist  in  all  that  is  not  prohibited 
by  law  and  that  serves  for  distinguishing  some  articles  from 
others,  identical  or  similar — but  of  different  origin. 
ART.  3.    There  may  not  be  registered  as  marks: 

1)  National  or  Municipal  standards,  emblems  or  arms,  or 
the  standards  or  arms  of  foreign  nations; 

2)  The  form  or  color  of  the  article; 

3)  General  terms  or  expressions  used  for  distinguishing 
an  article,  or  that  do  not  present  the  characteristic  of  novelty 
with  relation  to  the  article  on  which  they  are  used,  in  any  lan- 
guage whatsoever; 

4)  Designations  that  generally  are  used  in  Spanish  or  other 
language  for  indicating  the  nature  of  the  article,  its  class  or 
quality; 

5)  Immoral  expressions  or  designs; 

6)  The  name  of  a  natural  or  legal  person,  unless  it  be  pre- 
sented in  a  peculiar  or  distinct  form; 

7)  A  mark  already  registered  or  used  by  another,  or  similar 
thereto  if  it  shall  have  been  intended  for  articles  of  the  same 
nature ; 

8)  The  name  or  portrait  of  a  person  if  this  latter  or  his 
heirs  shall  object; 

9)  The  distinctives  of  the  "Bed  Cross";  but  mercantile 
persons  or  societies  that  shall  have  used  them  up  to  the  present 
time,  duly  registered,  shall  not  be  molested  or  obliged  to  intro- 
duce any  modifications,  without  prejudice  to  the  arrangements 
that  the  Commission  of  the  Red  Cross  may  make. 

ART.  4.  Any  owner  of  a  trade  mark,  whether  it  be  national 
or  foreign,  may  acquire  the  exclusive  right  of  using  it  in  the 
Republic,  by  subjecting  himself  to  the  responsibilities  of  the 
present  law. 

ART.  5.  The  right  of  making  opposition  to  the  use  of  any 
mark  that  may,  directly  or  indirectly,  produce  confusion  be- 


790  SALVADOR 

tween  goods,  shall  pertain  to  the  manufacturer,  merchant  or 
agrarian  that  shall  have  fulfilled  the  requisites  demanded  by  law. 

ART.  6.  The  ownership  of  a  mark  shall  pass  to  the  heirs 
and  may  be  transferred  by  contract. 

ART.  7.  The  assignment  or  sale  of  the  establishment  com- 
prehends that  of  the  mark,  save  stipulation  to  the  contrary, 
and  the  assignee  shall  have  the  right  of  availing  himself  of  the 
said  mark,  even  though  it  be  a  name,  in  the  same  way  as  the 
assignor  did,  without  restrictions  other  than  those  expressly 
imposed  in  the  instrument  of  assignment. 

ART.  8.  The  transfer  of  a  mark  must  be  shown  in  an 
authentic  instrument,  which  shall  be  presented  at  the  Patent 
Office  for  its  inscription  in  the  book  of  registration  of  assign- 
ments of  trade  marks.  The  assignment  shall  be  made  to  appear 
in  a  memorandum  on  the  margin  of  the  original  registration 
and  the  instrument  of  assignment  shall  be  returned  with  en- 
dorsement of  being  registered. 

ART.  9.  The  registration  of  a  mark  shall  give  the  right 
of  making  use  thereof  exclusively  for  the  goods  for  which  it  is 
intended  and  for  others  comprised  in  the  class  to  which  said 
goods  belong. 

ART.  10.  The  mark  must  necessarily  be  used  on  the  goods 
for  which  it  is  intended.  If  it  shall  not  be  used  within  one  year 
counted  from  the  inscription  of  the  registration,  or  shall  cease 
to  be  used  for  one  year,  its  avoidance  may  be  petitioned.  If  the 
mark  is  foreign,  the  importation  of  the  article  into  Salvador 
is  not  necessary  and  the  registration  shall  not  become  invalid 
if  fulfillment  be  made  without  the  Republic  of  the  dispositions 
of  this  article. 

CHAPTER  II 

APPLICATION  AND  REGISTRATION 

ART.  11.  Whoever  desires  to  obtain  the  exclusive  owner- 
ship of  a  mark  of  manufacture,  commerce  or  agriculture,  shall 
petition  it  at  the  Patent  Office,  limiting  the  application  to  a 
single  mark,  even  though  two  or  more  marks  refer  to  a  single 
article,  except  when  the  mark  consists  of  two  or  more  words  or 
phrases  of  which  one  shall  be  a  translation  of  the  other ;  in  this 
case  there  shall  be  made  an  application  by  including  all  the 
marks,  but  the  fees  and  taxes  shall  be  paid  for  each. 

ART.  12.    In  the  application  there  shall  be  given : 

1)  The  name,  profession  and  domicile  of  the  owner  of  the 
mark; 

2)  A  detailed  description  of  the  mark,  determining  its 
essential  parts  and  the  reservations  that  shall  be  made  with 


SALVADOR  791 

reference  to  these.  If  the  color  of  the  mark  constitutes  an 
essential  part  thereof  by  way  of  a  distinctive  element,  a  special 
description  of  the  colors  shall  be  made ; 

3)  The  designation  of  the  article  or  articles  for  which  the 
mark  is  intended; 

4)  The  nationality  of  the  mark; 

5)  The  name  of  the  factory,  if  it  should  have  such; 

6)  The  name  of  the  country  and  of  the  city  or  place  where 
the  article  is  principally  manufactured  or  distributed. 

ABT.  13.    With  the  application  there  shall  be  included: 

1)  The  documents  by  which  is  legitimized  the  personality 
of  the  applicant,  if  it  be  necessary; 

2)  Twenty  facsimiles  of  the  mark.    If  the  color  of  the  mark 
constitutes  an  essential  part  thereof  by  way  of  a  distinctive  ele- 
ment, the  facsimiles  shall  be  of  corresponding  colors ; 

3)  An  electrotype  of  the  mark,  the  height  whereof  shall 
be  from  twenty  to  thirty  millimeters  and  its  length  and  breadth 
from  fifteen  to  one  hundred  millimeters ; 

4)  The  receipt  for  the  registration  fees  issued  by  the  corre- 
sponding office. 

ABT.  14.  The  application  being  presented,  the  Patent 
Office  shall  make  note  of  the  day  and  hour  of  presentation  and 
shall  number  and  sign  each  one  of  its  sheets. 

ART.  15.  If  the  Patent  Office  shall  find  that  the  application 
is  in  accordance  with  the  laws  and  the  mark  is  of  those  whose 
registration  is  not  prohibited,  it  shall  admit  the  application  and 
shall  order  an  extract  thereof  to  be  published,  along  with  the 
facsimile  of  the  mark,  three  times  in  the  official  periodical. 

ABT.  16.  Ninety  days  having  expired,  counted  from  that 
following  the  third  publication,  without  opposition  being  pre- 
sented, declaration  shall  be  made  that  the  mark  is  the  property 
of  the  applicant  and  an  order  shall  be  given  to  register  and  draw 
up  the  respective  certificate. 

ABT.  17.  In  case  of  opposition  being  presented  within  said 
term,  order  shall  be  made  to  suspend  the  procedure  of  registra- 
tion and  the  parties  shall  be  notified  to  establish  their  rights 
before  the  corresponding  tribunals.  The  opposer  must  present 
at  the  Patent  Office,  within  the  ninety  days  following  the  date 
of  the  presentation  of  the  opposition,  a  certification  of  having 
filed  the  corresponding  application.  If  that  certification  is  not 
presented  within  said  term,  the  registration  shall  be  ordered, 
on  petition  of  the  party  interested,  and  the  opposer  shall  be 
condemned  to  costs,  damages  and  injuries.  If  the  certification 
of  the  application  having  been  filed  shall  be  presented  within 
said  term,  there  shall  continue  suspended  the  procedure  of 


792  SALVADOR 

registration  until  there  be  presented  the  writ  of  execution  or 
the  certification  of  the  favorable  sentence  that  shall  have  re- 
sulted in  court,  and  then,  on  petition  of  the  party,  registration 
shall  be  made,  if  the  applicant  be  victorious,  or  it  shall  be 
declared  rejected  in  the  contrary  case. 

If  the  applicant  for  registration  of  a  mark  or  the  opposer 
shall  desire  to  withdraw  his  application  or  opposition  before 
the  case  is  brought  before  the  common  tribunals,  the  Patent 
Office  shall  hear  the  other  party  and,  if  this  latter  shall  accept 
the  withdrawal,  it  shall  decide  accordingly ;  if  he  does  not  accept, 
there  shall  remain  suspended  the  jurisdiction  of  the  Patent  Office 
until  the  term  expires  for  the  presentation  of  the  proof  of  the 
application  having  been  made,  or  the  certification  of  the  reso- 
lution of  the  common  tribunals  shall  be  presented  to  it. 

ART.  18.  The  certificate  of  registration  shall  be  drawn  up 
in  the  name  of  the  Republic  and  shall  contain: 

1)  The  facsimile  of  the  mark; 

2)  The  name,  domicile  and  calling  of  the  owner; 

3)  The  date  and  hour  of  the  presentation  of  the  application 
for  registration; 

4)  The  nationality  of  the  mark ; 

5)  The  enumeration  and  classification  of  the  goods  for 
which  it  is  intended ; 

6)  The  date  of  registration,  its  number  and  that  of  the 
book  and  folios  on  which  it  was  made; 

7)  The  term  of  duration  of  the  registration;  and 

8)  The  seal  of  the  Office  and  the  signature  of  the  Commis- 
sioner and  of  the  Secretary. 

The  certification  of  registration  shall  bear  annexed  a  cer- 
tified copy  of  the  application  for  registration ;  it  shall  be  drawn 
up  in  duplicate,  one  copy  being  given  to  the  interested  party, 
the  other  copy  being  preserved  in  the  archives  of  the  Office, 
along  with  the  corresponding  file,  for  drawing  up  certified  copies 
for  those  that  apply  for  same.  On  the  reverse  of  the  certificate 
of  registration  there  shall  be  printed  Arts.  8,  9,  10,  19,  21  and 
36  of  this  law. 

ART.  19.  If  a  mark  shall  already  have  been  registered,  any 
person  that  shall  believe  himself  injured  may  solicit  the  avoid- 
ance of  this  registration.  This  action  shall  be  brought  as  an 
ordinary  case  at  law  and  shall  become  outlawed  in  five  years 
counted  from  the  date  of  the  registration. 

ART.  20.  The  right  of  priority  as  regards  the  ownership 
of  a  mark  shall  be  granted  according  to  the  use  that  has  been 
made  thereof  and  otherwise  according  to  the  day  and  hour  on 
which  application  was  presented  at  the  Office. 


SALVADOR  793 

ART.  21.  The  registration  of  a  mark  shall  only  be  valid 
for  twenty  years ;  this  term  having  expired,  it  shall  become  void 
unless  within  opportune  time  its  renewal  shall  have  been  ob- 
tained. Each  renewal  shall  last  for  twenty  years. 

Every  registration  may  be  renewed  before  it  becomes  void 
and  after  there  shall  have  been  paid  the  fees  prescribed  by  law. 
The  corresponding  receipt  being  presented  at  the  Patent  Office, 
the  renewal  of  the  mark  shall  be  noted  in  the  Register,  and 
there  shall  be  given  to  the  interested  party  a  certificate  of 
renewal  such  as  that  of  which  Art.  18  treats,  without  other 
procedure. 

ART.  22.  The  Patent  Office  shall  preserve  in  its  archives 
the  trade  marks  deposited,  along  with  the  corresponding  files 
and  duplicates  of  the  certificates  of  registration.  With  the  files 
there  shall  be  included  the  receipts  for  taxes  or  fees  and  peti- 
tions for  registration  of  assignment  and  renewals  and  copies  of 
the  documents  in  which  are  evidenced  the  assignments. 

There  shall  be  opened  books  for  the  registration  of  trade 
marks,  books  for  assignments  of  trade  marks,  and  a  book  for 
entries  of  applications  for  registrations,  and  other  books  that 
may  be  necessary.  Likewise,  there  shall  be  prepared  an  alpha- 
betical index  of  trade  mark  registrations,  there  being  followed 
the  order  of  the  names  of  the  owners,  and  another  alphabetical 
index  following  the  order  of  the  articles  to  which  the  marks 
refer. 

Registrations  shall  be  effected  one  following  the  other  with- 
out leaving  greater  space  between  them  than  one  line  and  there 
being  followed  the  order  corresponding  to  the  date  and  hour 
of  the  decree  that  orders  the  registration.  In  the  same  order 
shall  be  enumerated  cases  litigated. 

ART.  23.  From  resolutions  of  the  Patent  Office  by  which 
there  is  admitted  or  rejected  an  application  for  registration 
or  an  opposition,  by  which  there  is  ordered  or  denied  a  registra- 
tion or  a  certification,  by  which  command  is  given  to  acknowl- 
edge personality,  and,  in  general,  from  all  resolutions  that  cause 
or  may  cause  irreparable  injury,  appeal  may  be  granted  to  the 
Ministry  of  Fomento. 

The  term  for  appeal  shall  be  ten  days. 

The  appeal  being  admitted,  the  parties  shall  be  summoned 
to  the  end  that  they  may  be  present  by  the  third  day  to  avail 
themselves  of  their  rights  before  the  superior  tribunal.  Whether 
they  appear  or  not,  the  Ministry  shall  grant  twenty  days  so  that 
the  parties  may  present  their  allegations  and  proofs  and,  this 
term  having  expired,  it  shall  decide  even  though  the  parties  may 
not  have  appeared  or  alleged.  In  this  proceeding,  notification 


794  SALVADOR 

shall  be  made  by  means  of  edicts  when  the  parties  do  not  appear 
therein  or  shall  not  have  indicated  residence  in  this  city  for  the 
purpose.  Against  the  resolution  of  the  Ministry  there  shall  be 
no  appeal. 

CHAPTER  III 

NAMES,  INSIGNIA,  ETC. 

ART.  24.  The  name  of  a  merchant  or  producer,  that  of  a 
firm,  that  of  joint  stock  corporations,  that  of  the  sign  or  desig- 
nation of  a  house  or  establishment  that  trades  in  determined 
articles  or  products,  that  of  a  periodical,  office  or  agency,  shall 
constitute  property  for  the  effects  of  this  law. 

ART.  25.  He  that  shall  wish  to  exercise  an  industry,  com- 
merce or  branch  already  exploited  by  another  person,  with  the 
same  name,  or  with  the  same  conventional  designation,  shall 
adopt  a  modification  that  shall  cause  that  name  or  that  desig- 
nation to  be  visibly  distinct  from  that  which  the  pre-existing 
house  or  establishment  uses. 

ART.  26.  If  the  one  injured  by  the  use  of  a  name  shall 
make  no  claim  within  the  period  of  one  year  from  the  day  on 
which  it  began  to  be  used  publicly  by  another,  he  shall  lose  his 
right  to  any  claim.  This  action  shall  be  brought  as  an  ordinary 
case  at  law. 

ART.  27.  The  right  to  the  exclusive  use  of  a  name  as  prop- 
erty shall  become  extinct  together  with  the  commercial  house 
that  bears  it  or  with  the  exploitation  of  the  branch  for  which 
it  was  intended. 

ART.  28.  The  registration  of  a  name  is  not  necessary  in 
order  to  exercise  the  rights  accorded  by  this  law. 

CHAPTER  IV 

FALSIFICATIONS 

ART.  29.  There  is  falsification  of  a  mark  of  manufacture, 
commerce  or  agriculture,  in  the  following  cases : 

1)  When  the  original  mark  is  imitated  on  merchandise  or 
products  comprised  in  the  same  class  as  it ; 

2)  When  there  is  sold  or  offered  for  sale  merchandise  that 
bears  imitation  marks ; 

3)  When  there  are  sold,  bought  or  offered  for  sale,  imita- 
tion marks ; 

4)  When  there  are  sold,  offered  for  sale  or  bought,  original 
marks  without  the  consent  in  writing  of  the  owner ; 

5)  When  use  is  made  of  marks  that  contain  false  indica- 
tions as  to  the  nature,  quantity,  quality,  origin  of  the  merchan- 
dise or  products,  or  it  be  falsely  assured  that  they  have  been 


SALVADOR  795 

awarded  titles,  medals,  diplomas  or  other  distinctives  in  expo- 
sitions or  otherwise; 

6)  When,  without  imitating  the  mark,  it  is  removed  or 
separated  from  some  of  the  articles  in  order  to  be  applied  to 
others ; 

7)  When  a  person  shall  place  his  name,  that  of  his  estab- 
lishment or  any  word  or  sign  over  an  original  mark; 

8)  When  there  shall  be  refilled  with  spurious  products  con- 
tainers with  the  mark  of  another  or  when  they  shall  be  refilled 
with  products  that  do  not  correspond  to  the  legitimate  as 
announced  by  the  mark  that  the  container  holds ;  or  when  there 
shall  be  mixed  legitimate  products  bearing  original  marks  with 
others  of  foreign  character  or  spurious;  and  when  these  prod- 
ucts shall  be  stored  or  sold.    This  last  is  presumed  if  they  shall 
be  found  in  shops,  stores  or  warehouses. 

ART.  30.  The  Patent  Office  shall  forward  ex  officio  to  each 
one  of  the  customhouses  a  facsimile  of  each  mark  registered  or 
renewed  with  a  statement  that  gives: 

1)  The  name,  profession  and  domicile  of  the  owner; 

2)  The  nationality  of  the  mark; 

3)  The  enumeration  of  the  articles  for  which  it  is  intended ; 

4)  The  date  of  registration  or  renewal,  its  number  and 
that  of  the  book  and  folios  in  which  it  was  made ; 

5)  The  date  on  which  the  registration  expires. 

On  the  expiry  of  the  registration  of  a  mark,  the  Office  shall 
give  notice  thereof  to  the  same  customhouses. 

ART.  31.  When  it  is  a  question  of  introducing  merchan- 
dise with  imitation  marks,  the  administrators  of  customs  shall 
place  them  at  the  disposition  of  the  corresponding  tribunals. 

ART.  32.  It  is  presumed  that  an  article  bears  an  imitation 
mark  if  it  is  imported  from  a  country  different  from  that  men- 
tioned in  the  application,  according  to  Art.  12. 

ART.  33.  Any  machine  or  instrument  intended  to  imitate 
a  mark  shall  be  confiscated. 

CHAPTER  V 

CLASSIFICATION  OF  GOODS 

ART.  34.  For  the  effects  of  this  law  the  goods  to  which 
the  marks  shall  be  applied  shall  be  classified  as  follows : 

DESCRIPTION  I 

Raw  Materials,  Unelab orated.    Agricultural  Products 
CLASS  1.    Products  of  agriculture  and  horticulture,  such  as 
starchy  grains,  cotton  and  other  fibres  in  their  raw  state,  flowers, 
seeds  and  plants. 

CLASS  2.     Construction   woods   in   their   raw   state   or   in 


796  SALVADOR 

boards  or  other  pieces,  planed,  dovetailed,  etc.,  firewood,  char- 
coal, cork,  barks,  roots,  etc. 

CLASS  3.  Liquid  or  solid  pitch,  resins,  tar,  gums,  of  every 
class,  and  rubber  in  its  raw  state. 

CLASS  4.    Animals,  on  the  hoof  and  butchered. 

CLASS  5.  Hides,  hair,  horsehair,  wool,  feathers  in  their 
raw  state. 

CLASS  6.  Tortoise  shell,  ivory,  mother  of  pearl,  coral, 
whalebone,  horn,  bones,  etc.,  in  raw  or  polished  state. 

CLASS  7.  Minerals,  earths,  uncut  stone,  mineral  carbon, 
coke,  briquettes,  etc. 

DESCRIPTION  II 
Elaborated  and  Partly  Elaborated  Materials 

CLASS  8.  Materials  in  bulk,  ingots,  bars,  sheets,  plates, 
wires  and  residues. 

CLASS  9.  Non-edible  oils,  greases  and  essences;  petro- 
leums. 

CLASS  10.    Leather  and  prepared  hides. 

CLASS  11.  Rubber  and  analogous  substances  in  crude  form, 
sheets,  strings,  pipe  and  tubes. 

CLASS  12.  Chemical  substances  and  products  for  industry, 
photography,  tanning,  etc.,  not  comprised  in  other  classes. 

CLASS  13.  Explosives,  powders,  rockets,  matches,  fire 
lighters,  fireworks,  etc. 

CLASS  14.  Chemical  substances  and  products  for  agricul- 
ture and  horticulture ;  artificial  and  natural  fertilizer,  etc. 

CLASS  15.    Paints  and  preparations. 

CLASS  16.    Materials  not  comprised  in  other  classes. 

DESCRIPTION  III 
Tools,  Machinery,  Articles  of  Transport 

CLASS  17.  Tools,  machines  and  hand  implements,  includ- 
ing cutting,  not  comprised  in  other  classes ;  grindstones. 

CLASS  18.    Sewing  machines,  their  parts  and  accessories. 

CLASS  19.  Agricultural  implements,  cultivating  imple- 
ments and  their  component  parts. 

CLASS  20.  Steam  engines  and  their  component  parts,  not 
including  locomotives  and  other  articles  comprised  in  other 
classes. 

CLASS  21.  "Wrought  copper,  pipes,  casks  and  receptacles  of 
metal  and  wood. 

CLASS  22.  Electric  machinery,  its  components  and  acces- 
sories not  comprised  in  other  classes. 

CLASS  23.    Watchmaking  and  chronometry. 

CLASS  24.  Shipbuilding,  its  parts  and  accessories,  naval 
construction  and  its  accessories,  not  comprised  in  other  classes. 


SALVADOR  797 

CLASS  25.  Railway  material,  stationary  and  rolling,  loco- 
motives, rails,  apparatus,  etc. 

CLASS  26.  Coachmaking,  carriage  making,  automobiles, 
velocipedes,  motorcycles,  vehicles,  not  comprised  in  other 
classes,  their  component  parts  and  accessories. 

CLASS  27.  Aerostats,  aeroplanes  and  other  air  vehicles, 
their  tools  and  accessories. 

CLASS  28.  Saddlery,  saddles,  harnesses,  harness  gear, 
whips,  ornaments  for  horses,  etc. 

CLASS  29.  Cords,  rope  and  string  of  hair  or  fibre  of  any 
sort ;  metallic  cables. 

CLASS  30.  Firearms  for  war  and  hunting  purposes  and 
their  ammunitions  not  comprised  in  class  13. 

CLASS  31.  Divers  machines  and  apparatus  not  comprised 
in  other  classes. 

DESCRIPTION  IV 
Construction 

CLASS  32.  Lime,  gypsum,  cement,  asbestos,  flagstones,  as- 
phalt, bricks  and  tiles,  tarred  paper  and  cardboard,  sandpaper, 
glazed  tile,  pipes,  marble,  stone,  slate,  articles  of  ceramics  and 
other  materials  worked  or  shaped  for  construction  and  archi- 
tectural decoration. 

CLASS  33.  Articles  of  carpentry  not  comprised  in  other 
classes. 

CLASS  34.  Metallic  pieces  for  construction  and  ornamen- 
tation. 

CLASS  35.  Hardware;  iron  fittings;  locksmiths*  work;  iron 
goods;  nails;  screws;  bolts;  chains;  and,  in  general,  articles  of 
metal  for  construction  not  comprised  in  other  classes. 

CLASS  36.  Paper,  cloth,  cement,  creams  and  other  sub- 
stances for  polishing. 

CLASS  37.  Paints  in  general,  varnishes  and  accessories, 
waxes,  lacquers,  glue,  lacs,  etc. 

CLASS  38.    Wallpaper  and  substitutes  for  wall  decoration. 

CLASS  39.  Heaters,  stoves,  ventilating  apparatus,  disin- 
fectors,  etc.,  toilets,  baths,  wash  basins,  elevators,  etc. 

DESCRIPTION  V 
Furniture  and  Household  Articles 

CLASS  40.  Cabinetmaking,  furniture,  frames,  rods  of  wood, 
iron,  or  other  materials,  their  parts  and  accessories. 

CLASS  41.  Mattress  making,  cushions,  pillows,  feathers, 
feather  beds,  wools,  horsehair  and  other  articles  prepared  for 
mattress  making. 

CLASS  42.    Kitchen  utensils  of  iron,  steel,  or  other  metal. 


798  SALVADOR 

CLASS  43.    Apparatus  for  baths  and  douches  not  comprised 
in  construction. 

CLASS  44.    Filters. 

CLASS  45.    Wash  stands,  pitchers,  soap  holders,  cuspidors 
and  other  utensils  of  domestic  use  of  iron  or  other  metals. 

CLASS  46.    Tapers,  candles,  wax  matches,  lamps,  sulphur 
matches  and  other  articles  of  illumination. 

CLASS  47.    Heating  and  cooking  utensils. 

CLASS  48.    Glassware,  crystal,  mirrors  and  glass  plate. 

CLASS  49.    Porcelain,  Chinaware,  pottery,  ceramics. 

CLASS  50.    Cutlery,  cutting  and  carving  instruments. 

CLASS  51.    Carpets  and  matting  in  general,  coverings  there- 
for and  for  floors,  door  mats,  shoe  cleaners,  etc. 

CLASS  52.    Brooms    and    brushes    of    every    class,    paint 
brushes,  artist's  brushes  and  baskets. 

CLASS  53.    Carpets,  rugs,  coverings  for  furniture. 

CLASS  54.    Curtains  and  accessories. 

CLASS  55.    Furnishing   and   household   articles   not   com- 
prised in  other  classes. 

DESCRIPTION  VI 
Thread,  Textiles  and  Clothing 

CLASS  56.    Thread  of  wool  and  other  hair. 

CLASS  57.    Cloth,  fabrics  and  textiles  of  wool  or  other  hair. 

CLASS  58.    Silk  thread,  twisted  silk  and  sewing  silk. 

CLASS  59.    Silk  piece  textiles. 

CLASS  60.    Articles  of  silk  not  comprised  in  the  preceding 
classes. 

CLASS  61.    Thread  of  linen,  hemp,  jute  and  of  other  fibres. 

CLASS  62.    Textiles  of  linen,  hemp,  jute,  and  of  other  fibres. 

CLASS  63.    Cotton  thread. 

CLASS  64.     Cotton  piece  goods. 

CLASS  65.    Ready-made  clothing,  or  partly  made,  of  every 
kind. 

CLASS  66.    Linen  goods,  white  goods,  and  goods  for  domes- 
tic use. 

CLASS  67.    Hats  of  every  kind  and  millinery. 

CLASS  68.    Feathers  for  trimming,  artificial  flowers,  and 
other  trimmings  for  clothing. 

CLASS  69.    Embroidery,   passementerie,   braids,   bindings, 
edgings  and  laces,  girdles  and  ornaments,  etc. 

CLASS  70.    Buttons,  buttonhole-braid,  lacings. 

CLASS  71.    Gloves. 

CLASS  72.    Corsets. 

CLASS  73.    Needles  and  pins  not  classified. 

CLASS  74.    Footwear  of  every  class  and  accessories. 


SALVADOR 


799 


CLASS  75. 
CLASS  76. 
and  the  like. 
CLASS  77. 
CLASS  78. 


Canes,  umbrellas,  parasols. 

Valises,  trunks,  travelling  requisites,  commodes 


Waterproof,  oil,  rubber  cloths,  etc.,  linoleum. 
Canvas  and  awnings. 

DESCRIPTION  VII 

Fancy  Goods 

CLASS  79.    Gold  and  silver  ware. 
CLASS  80.    Real  and  imitation  jewelry. 
CLASS  81.    Pearls  and  precious  stones. 
CLASS  82.    Morocco  leather. 

CLASS  83.  Articles  of  adornment  of  precious  metals,  of 
aluminum,  nickel,  Britannia  metal,  imitations  of  metal  (not 
classified). 

Fans,  fancy  articles  and  articles  of  adornment 


CLASS  84. 
not  classified. 

CLASS  85. 

CLASS  86. 

CLASS  87. 
utilities. 

CLASS  88. 


Perfumery  in  general. 

Toilet  soaps. 

Combs,    sponges    and 


Perfumery  accessories, 
toilet    accessories    and 


Razors  and  blades  for  shaving,  razor  strops  and 
other  requisites  for  shaving. 

CLASS  89.  Manufactured  tobaccos,  cigars,  cigarettes,  cigar- 
ette papers. 

CLASS  90.  Pipes,  cigar  holders,  humidors,  tobacco  boxes 
and  other  smokers '  articles. 

CLASS  91.    Toys  of  every  class,  games,  playing  cards,  etc. 

CLASS  92.  Sporting  and  gymnasium  articles,  hunting  and 
fishing  equipment  not  comprised  in  other  classes. 

DESCRIPTION  VIII 

Foodstuffs 
Meats,  fish,  birds,  eggs  and  game  in  the  fresh 


CLASS  93. 
state. 

CLASS  94. 

CLASS  95. 

CLASS  96. 
products. 

CLASS  97. 

CLASS  98. 

CLASS  99. 

CLASS  100. 

CLASS  101. 

CLASS  102. 
fectionery. 


Foods,  salted  or  preserved  in  other  manner. 

Vegetables  and  dried  or  fresh  fruits. 

Milk,  lard,  butter,  cream,  cheese  and  other  dairy 

Edible  fats,  butters  and  oils. 
Vinegar,  salt,  condiments. 
Flour. 

Foodpastes. 

Bread,  cake,  pastry. 

Sugar,  honey,  sweets,  syrups,  jellies  and  con- 


800  SALVADOR 

CLASS  103.  Chocolate  and  other  cacao  products  not  clas- 
sified. 

CLASS  104.  Coffee,  tea,  yerba  mate,  chicory  and  other  sub- 
stances and  products  for  infusion  and  hot  drinks. 

CLASS  105.    Alcohol,  spirits,  divers  spirituous  liquors. 

CLASS  106.  Wines,  sparkling  wines,  cider,  beer,  fermented 
drinks  in  general,  excluding  gin. 

CLASS  107.  Gaseous  waters,  mineral  waters  in  general,  gin 
and  other  drinks  not  classified. 

CLASS  108.    Food  articles  not  classified. 

CLASS  109.  Food  substances  and  food  products  for 
animals. 

DESCRIPTION  IX 
Instruction,  Science,  Arts.  Miscellaneous 

CLASS  110.    Books,  printed  matter. 

CLASS  111.    Stationery  in  general,  cardboard. 

CLASS  112.  Office  supplies  and  utilities:  inkwells,  pens, 
penholders,  pencils,  erasers,  blotting  papers,  etc. 

CLASS  113.    Writing,  copying,  stamping  and  printing  inks. 

CLASS  114.    Bookbinders'  supplies. 

CLASS  115.  Fine  colors  for  painting  (not  classified  under 
37),  and  painters'  supplies. 

CLASS  116.  Objects  of  art  and  ornamentation:  paintings, 
sculptures,  engravings,  photographs,  photogravures,  litho- 
graphs, etc. 

CLASS  117.    Printing  type,  printing  presses  and  supplies. 

CLASS  118.  Typewriters  and  their  parts  and  accessories; 
copying  apparatus  and  parts  and  accessories. 

CLASS  119.     Optical  scientific  instruments. 

CLASS  120.    Photographic  instruments  and  supplies. 

CLASS  121.  Musical  instruments  of  every  kind,  sound  re- 
producing machines,  their  parts  and  accessories,  apparatus  for 
playing  musical  instruments,  sound  reducers,  etc. 

CLASS  122.  Instruments  and  utilities  intended  for  instruc- 
tion and  education;  models,  maps,  plans,  furniture,  etc. 

CLASS  123.  Surgical,  medical,  orthopedic,  pharmaceutical, 
chemical  and  veterinary  instruments  and  apparatus. 

CLASS  124.  Scientific  instruments  in  general:  engineering, 
architectural,  surveying  instruments;  weights,  measures,  etc. 

CLASS  125.  Chemical  and  pharmaceutical  products,  special 
or  not ;  drugs,  veterinary  products,  disinfectants. 

CLASS  126.  Objects  and  apparatus  not  comprised  in  other 
classes  used  in  medicine,  surgery,  pharmacy,  veterinary,  etc.,  in 
relation  to  the  health  of  man  and  beast. 

CLASS  127.    Miscellaneous  articles  net  classified. 


SALVADOR  801 

CHAPTER  VI 

REGISTRATION  FEES 

ABT.  35.  The  stamped  paper  that  is  used  in  the  procedure 
of  registration  shall  be  that  of  twenty  centavos  per  sheet.  Cer- 
tificates of  registration  of  trade  marks  shall  be  drawn  up  on 
ordinary  paper  with  a  stamp  of  five  colones  on  the  first  sheet 
and  ten  centavos  on  each  sheet  following.  Authenticated  copies 
of  certificates  of  registration  shall  bear  a  stamp  of  two  colones 
on  the  first  sheet  and  ten  centavos  on  each  sheet  following. 

ART.  36.  The  fees  for  registration  of  a  mark  and  those  for 
its  renewal  shall  be :  for  Salvadoreans,  ten  colones ;  for  foreign- 
ers, twenty  colones.  The  fees  for  the  assignment  of  a  mark  by 
instrument  between  persons  living  shall  be  ten  colones.  In 
addition  to  the  fees  above  established,  there  shall  be  paid  for 
each  mark  and  for  the  term  that  the  registration  lasts  an  annual 
tax  of  three  colones  for  Salvadoreans  and  five  colones  for  for- 
eigners ;  the  payment  having  to  be  made  covering  a  full  period 
of  five  annuities  in  advance  and  the  corresponding  receipt  hav- 
ing to  be  presented  at  the  Patent  Office  within  the  first  month 
of  the  corresponding  period,  and,  if  it  be  not  presented,  the 
registration  shall  be  declared  forfeited  and  the  Office  shall  ex 
officio  cancel  the  registration. 

ART.  37.  The  notice  of  which  Art.  15  of  this  law  speaks 
shall  not  cost  the  interested  party  more  than  six  colones. 

ART.  38.  All  laws  that  burden  the  registration  of  marks, 
directly  or  indirectly,  with  stamp  fees  or  stamped  paper  fees 
are  revoked. 

CHAPTER  VII 

ART.  39.  The  Trade  Mark  Law  of  May  11,  1910,  and  its 
amendments  and  additions  of  June  19,  1913,  and  July  12,  1916, 
are  revoked. 

ART.  40.  As  regards  the  payment  of  annual  taxes,  the 
laws  in  force  on  the  date  of  the  application  for  registry  shall 
hold,  but  with  respect  to  marks  renewed  after  this  law  has 
entered  into  force  they  shall  be  governed  by  it,  the  same  as  with 
regard  to  stamped  paper  and  stamps. 


SIAM 

LAW  OF  THE  YEAR  2457  (1914).    EFFECTIVE 
OCT.  1,  1914* 

1.  This  Law  shall  be  cited  as  the  "Law  on  Trade  Marks 
and  Trade-Names  of  the  Year  2457." 

2.  It  shall  come  into  force  on  the  1st  day  of  October,  2457.* 

CHAPTER  I 

TRADE  MARKS 

3.  A  trade-mark  is  a  mark  that  is  applied  or  attached  to 
goods  or  to  their  coverings,  packings  or  wrappers  so  as  to  dis- 
tinguish them  as  being  produced,  manufactured,  worked  upon, 
imported,  selected,  certified,  and  dealt  in  or  sold  by  a  particular 
person. 

4.  A  trade-mark  must  consist  of  or  contain  one  or  more 
of  the  following  particulars : 

1)  A  name  of  an  individual,  firm  or  company,  printed,  im- 
pressed, woven  or  marked  in  some  particular  and  distinctive 
manner;  or 

2)  A  reproduction  of  a  signature  of  the  individual,  firm  or 
company  applying  for  registration  thereof  as  a  trade-mark,  or 
of  some  predecessor  in  his  business;  or 

3)  A   distinctive   device,    emblem,   seal,   design,   pattern, 
brand,  label  or  ticket ;  or 

4)  A  distinctive  combination  of  letters  or  figures ;  or 

5)  An  invented  word  or  invented  words;  or 

6)  A  word  or  words  having  no  reference  to  the  nature  or 
quality  of  the  goods,  and  not  being  a  geographical  name. 

5.  The  following  may  not  be  used  as  a  trade-mark  or  part 
of  a  trade-mark: 

1)  The  Siamese  arms; 

2)  The  Royal  name,  and  Royal  monograms; 

3)  The  effigies  of  any  of  the  Kings,  Queens,  Princes,  Prin- 
cesses of  the  reigning  dynasty; 

4)  The  emblems  and  insignia  of  the  Royal  Orders  and 
Siamese  Decorations; 

5)  The  emblem  of  the  Red  Cross  and  the  Denominations 
"Red  Cross"  or  "Geneva  Cross"; 


*Operation  delayed  and  law  not  yet  in  effect,  although  applications  for  registration 
are  accepted  for  filing. 


SIAM  803 

6)  Any  mark  that  is  contrary  to  public  policy  or  to  good 
morals ; 

7)  A  device  identical  with  or  similar  to  a  medal,  diploma 
or  certificate  awarded  at  an  Exhibition  held  by  the  Siamese 
Government  or  by  a  Foreign  Government  or  Municipal  Cor- 
poration, unless  such  medal,  diploma  or  certificate  has  been 
actually  awarded  for  the  goods  bearing  it. 

6.  The  owner  of  a  trade-mark  is  entitled  to  the  exclusive 
use  thereof,  for  that  description  of  goods  for  which  it  is  used. 

7.  The  owner  of  a  trade-mark  is  entitled  to  the  exclusive 
use  of  the  words  mentioned  in  Section  4,  Nos.  5  and  6,  no  matter 
how  they  are  printed,  impressed,  woven,  or  marked. 

8.  If  after  the  coming  into  force  of  this  Law  a  .trade-mark 
has  been  publicly,  extensively  and  simultaneously  used  in  Siam 
on  goods  of  the  same  description  for  more  than  two  years  and 
by  more  than  three  owners  without  any  objection  bein^  lodged 
in  Court,  such  trade-mark  shall  be  deemed  to  be  common  in  the 
trade  in  that  description  of  goods  and  may  be  used  by  any 
person  in  Siam. 

9.  The  right  to  a  trade-mark  may  be  transferred  only  with 
the  business  in  that  description  of  goods  to  which  it  refers,  or 
by  dividing  it  according  to  the  nature  of  the  goods  for  which  it 
is  used. 

CHAPTER  II 

TRADE-NAMES 

10.  Any  person  engaged  in  trade  may  use  as  trade-name 
his  own  name  or  an  invented  name.    He  may  use  the  name  of 
another  person  with  the  consent  of  the  person  entitled  to  it. 

11.  No  person  may  use  as  a  trade-name  the  Royal  name 
or  a  name  including  the  word  Royal  without  a  warrant  from 
His  Majesty. 

12.  A  person  who  trades  under  a  lawful  trade-name  is 
entitled  to  the  exclusive  use  of  it.    If  a  person  bearing  an  iden- 
tical name  intends  to  trade  under  it  in  the  same  or  similar  goods 
he  must  add  to  it  some  other  name  or  qualification,  in  such  a 
way  as  to  prevent  his  trade-name  from  being  confused  with  the 
trade-name  of  the  former  person. 

CHAPTER  III 

REGISTRATION  OF  TRADE-MARKS 

13.  Every  trade-mark  complying  with  the  conditions  of 
Sections  4  and  5  may  be  registered,  provided  that  its  owner  be 
a  person  under  Siamese  jurisdiction  or  a  subject  of  a  Govern- 
ment which  has  accepted  the  present  Law. 


804  SIAM 

14.  The  Offices  for  the  registration  of  trade-marks  shall 
be  at  the  Ministry  of  Agriculture. 

15.  The  application  for  the  registration  of  a  trade-mark 
shall  be  made  in  writing  and  signed  by  the  applicant,  and  must 
be  directed  to  the  Registrar  for  Trade-Marks. 

16.  If  the  applicant  is  not  the  owner  of  the  trade-mark, 
he  must  attach  to  the  application  a  written  authority  showing 
that  he  has  the  power  to  apply  for  registration. 

17.  No  application  shall  be  entertained  unless  the  appli- 
cant had  a  fixed  place  of  business  in  Siam. 

18.  The  application  for  the  registration  of  trade-mark 
must  be  dated  and  must  contain  the  following  particulars : 

1)  The  name,  nationality,  residence  and  occupation  of  the 
applicant ; 

2)  The  name,  nationality,  residence  and  occupation  of  the 
owner  of  the  trade-mark,  if  he  be  not  the  applicant ; 

3)  The  class  of  goods  to  which  the  trade-mark  applies, 
according  to  the  classification  in  Schedule  A; 

4)  A  description  of  the  trade-mark  showing  its  true  dimen- 
sions. 

19.  If  a  trade-mark  is  intended  to  be  used  for  goods  of 
different  classes,  there  shall  be  made  an  application  for  each 
class  of  goods. 

20.  Trade-marks  which  while  resembling  each  other  in  the 
material  particulars  thereof,  yet  differ  in  respect  of : 

1)  The  statement  of  the  goods  for  which  they  are  respec- 
tively used  or  proposed  to  be  used,  or 

2)  Statements  of  numbers,  or 

3)  Statements  of  price,  or 

4)  Statements  of  quality,  or 

5)  Statements  of  names  of  places,  or 

6)  Colour, 

may  be  registered  as  a  series  in  one  registration,  provided  that 
they  refer  to  goods  of  the  same  class. 

21.  A  trade-mark  may  be  registered  with  blank  spaces  to 
be  filled  up  when  the  mark  is  affixed  to  the  goods. 

22.  To  the  application  shall  be  attached  three  identical 
representations  of  the  trade-mark,  on  separate  sheets  of  tough 
paper. 

These  representations  must  be  printed,  engraved  or  drawn 
so  as  to  be  of  a  durable  nature  and  to  clearly  show  the  mark. 
They  must  be  signed  by  the  applicant. 

23.  The  dimensions  of  the  sheet  of  paper  must  be  20  by  25 
centimeters.     The  trade-mark  must  be  printed,  engraved  or 


SIAM  805 

drawn  in  the  middle,  so  as  to  allow  on  the  sides  the  place  for 
the  particulars  mentioned  in  Section  27. 

24.  Whenever  possible,  the  trade-mark  must  be  repre- 
sented in  its  actual  size. 

Small  trade-marks  may  be  represented  on  an  enlarged 
scale. 

Trade-marks  which  are  of  a  larger  size  than  the  space 
allowed  on  the  sheet  of  paper  may  be  represented  on  a  reduced 
scale,  or  they  may  be  mounted  upon  linen,  tracing  cloth  or  such 
other  material  as  the  Registrar  may  consider  suitable ;  part  of 
the  mounting  shall  be  affixed  in  the  space  aforesaid  and  the  rest 
shall  be  folded  over. 

25.  A  signed  and  dated  receipt  of  the  application,  in  the 
form  provided  for  by  Schedule  B  attached  to  this  Law,  shall  be 
delivered  by  the  Registrar  to  the  applicant. 

26.  On  being  satisfied : 

1)  That  the  trade-mark  does  not  contain  any  of  the  partic- 
ulars forbidden  by  Section  5,  and 

2)  That  it  is  not  identical  with  one  already  registered  to 
another  owner  with  respect  of  goods  of  the  same  class,  or  so 
nearly  resembling  such  a  trade-mark  as  to  deceive  a  purchaser, 
and 

3)  That  the  other  conditions  required  by  law  are  complied 
with, 

The  Registrar  shall  enter  the  application  in  his  register 
in  the  form  provided  for  by  Schedule  C  attached  to  this  law. 

27.  The  Registrar  shall  at  the  same  time  enter  on  each  of 
the  three  representations  of  the  trade-mark  the  following  par- 
ticulars : 

1)  The  serial  number  of  the  registration; 

2)  The  date  on  which  the  application  was  received  at  the 
Office  of  the  Registrar ; 

3)  The  name,  nationality  and  address  of  the  owner  of  the 
trade-mark ; 

4)  The  class  of  goods  to  which  the  trade-mark  applies. 
He  shall  date  and  sign  every  such  statement  and  shall  affix 

to  it  the  seal  of  his  Office. 

28.  The  date  of  the  receipt  of  the  application  is  the  date 
of  the  registration. 

29.  Two  of  the  representations  shall  be  kept  by  the  Regis- 
trar.   The  third  representation  shall  be  returned  to  the  appli- 
cant. 

30.  If  in  the  opinion  of  the  Registrar  a  trade-mark  con- 
tains any  of  the  particulars  forbidden  by  Section  5  or  is  identi- 
cal with  one  already  registered  to  another  owner  with  respect 


806  SIAM 

of  goods  of  the  same  class,  or  is  so  nearly  resembling  such  a 
trade-mark  as  to  deceive  a  purchaser,  or  if  in  the  opinion  of  the 
Eegistrar  the  other  conditions  required  by  law  are  not  complied 
with,  the  Registrar  shall  refuse  to  proceed  with  the  registration 
and  shall  send  to  the  applicant  a  written  notice  thereof,  stating 
in  it  his  reasons  for  not  entering  the  application. 

31.  The  entry  of  refusal  of  application  must  be  made  with- 
in one  month  from  the  day  of  receipt  of  application. 

32.  The  applicants  may,  within  three  months  after  the 
receipt  of  the  notice  provided  by  Section  30,  submit  to  the  Reg- 
istrar a  counter-statement  of  the  grounds  on  which  he  relies  for 
his  application.    If  he  does  not  do  so,  he  shall  be  deemed  to  have 
abandoned  his  application. 

33.  If  within  one  month  from  receipt  of  the  counter-state- 
ment the  Registrar  has  not  entered  the  application,  the  appli- 
cant may  refer  the  case  to  the  Court,  which  shall  have  power  to 
give  such  order  as  it  may  think  in  accordance  with  the  law. 

34.  If  before  an  application  has  been  granted  another 
application  in  connection  with  the  same  class  of  goods  is  made 
for  the  same  trade-mark  or  for  a  trade-mark  so  nearly  resem- 
bling it  as  to  deceive  a  purchaser,  the  Registrar  shall  notify 
both  applicants  thereof  and  direct  them  to  settle  the  case  be- 
tween themselves  or  to  submit  it  to  the  Court. 

35.  If  within  three  months  from  the  date  of  the  notice 
provided  for  in  Section  34  the  Registrar  has  not  been  notified 
that  an  agreement  has  been  arrived  at  or  that  a  case  has  been 
entered  in  Court,  the  Registrar  shall  proceed  with  the  regis- 
tration of  the  trade-mark  for  which  application  has  first  been 
made. 

If  the  parties  have  come  to  an  agreement,  the  registration 
shall  be  made  in  accordance  with  it. 

CHAPTER  IV 

EFFECTS  OF  REGISTRATION  ON  TRADE-MARKS 

36.  The  registration  of  a  trade-mark  is  valid  for  twelve 
years  and  may  be  renewed. 

37.  A  person  who  is  registered  as  owner  of  a  trade-mark 
is  considered  to  be  its  owner  and  to  have  the  exclusive  right  to 
use  it  for  all  the  goods  of  the  class  or  classes  for  which  regis- 
tration has  been  granted  until  the  registration  has  been  can- 
celled, amended  or  restricted  under  Chapter  6. 

38.  Although  a  trade-mark  has  been  registered  in  one 
colour,  its  owner  has  the  exclusive  right  to  use  it  in  any  other 
colour. 


SIAM  807 

39.  Every  person  who  is  registered  as  the  owner  of  a 
trade-mark  must  keep  in  Siam  a  fixed  place  of  business  or  keep 
in  Siam  an  agent  having  a  fixed  place  of  business. 

CHAPTER  V 

CHANGES  IN  REGISTRATION  OF  TRADE-MARKS  AND  TRANSFERS 
OF  TRADE-MARKS 

40.  Every  change  in  the  address  or  in  the  name  of  the 
owner  of  a  registered  trade-mark  or  in  the  address  of  the  agent 
of  the  owner  of  a  registered  trade-mark  shall  be  registered. 

41.  No  transfer  of  the  right  to  a  registered  trade-mark 
shall  be  valid  as  regards  third  persons  unless  registered. 

42.  An  application  for  a  change  or  transfer  must  be  made 
in  writing  and  must  be  accompanied  by  the  representation  of 
the  trade-mark  which  was  originally  delivered  to  the  applicant 
under  Section  29. 

43.  The  change  or  transfer  must  be  entered  in  the  register 
in  the  form  provided  for  in  Schedule  D,  and  must  be  entered 
also  on  the  three  original  representations  of  the  trade-mark. 

CHAPTER  VI 

CANCELLATION  OR  AMENDMENT  OF  REGISTRATION 

44.  The  registration  of  a  trade-mark  shall  be  cancelled  by 
the  Registrar  at  the  expiration  of  the  period  of  protection  pro- 
vided for  by  Section  36. 

45.  The  registration  of  a  trade-mark  may  be  cancelled  by 
the  Registrar  if  the  owner  of  that  trade-mark  has  discontinued 
for  more  than  two  years  to  keep  in  Siam  a  fixed  place  of  busi- 
ness or  an  agent  having  a  fixed  place  of  business. 

46.  Before  proceeding  with  the  cancellation  of  a  registra- 
tion of  a  trade-mark  under  Section  44  or  45,  the  Registrar  must 
give  notice  thereof  to  the  owner  or  agent  at  his  last  registered 
address  and  allow  him  not  less  than  six  months  to  make  a 
counter-statement  as  he  may  think  fit. 

47.  A  person  who  feels  aggrieved  at  a  decision  of  the  Reg- 
istrar cancelling  a  registration  may  apply  to  the  Court  to  have 
it  amended  or  reversed. 

48.  The  registration  of  a  trade-mark  may  be  cancelled  by 
an  order  of  the  Court  on  the  application  of  any  person  who 
may  show: 

1)  That  he  has  a  better  title  to  it  than  the  person  regis- 
tered as  the  owner;  or 

2)  That  the  trade-mark  has  become  common  in  trade  as 
provided  for  by  Section  8 ;  or 


808  SIAM 

3)  That  the  person  registered  as  the  owner  of  the  mark  has 
discontinued  for  more  than  two  years  to  keep  in  Siam  a  fixed 
place  of  business  or  an  agent  having  a  fixed  place  of  business. 

If  the  applicant  shows  better  title  only  for  some  of  the 
goods  of  the  class  for  which  registration  has  been  granted,  the 
Court  shall  restrict  the  registration  to  the  goods  for  which 
better  title  has  not  been  shown. 

49.  The  Registrar  shall  on  production  of  the  certified 
copy  of  any  final  order  or  judgment  of  a  Court  granting  an 
application,  or  cancelling  a  registration,  or  reversing  a  cancella- 
tion, or  altering  an  entry,  make  a  necessary  entry  or  cancella- 
tion or  alteration  in  the  Register  and  in  the  representations  of 
the  trade-mark  concerned. 

50.  In  all  proceedings  before  the  Court  the  costs  of  the 
Registrar  shall  be  in  the  discretion  of  the  Court,  but  the  Regis- 
trar shall  not  be  ordered  to  pay  the  costs  of  any  other  of  the 
parties. 

CHAPTER  VII 

EXAMINATION  OP  REGISTER — COPIES 

51.  Any  person  shall  be  entitled  to  consult  the  Register  of 
entries  of  trade-marks,  and  the  collection  of  representations  of 
trade-marks  kept  by  the  Registrar  and  to  obtain  copies  thereof. 

52.  The  Registrar  shall  on  application  made  by  any  person 
being  the  party  to  a  case  in  which  a  trade-mark  is  concerned 
send  to  the  Court  one  of  the  representations  of  such  trade-mark 
which  are  kept  in  his  office. 

The  Court  shall  return  the  representation  to  the  Registrar 
as  soon  as  the  case  has  become  final. 

CHAPTER  VIII 

JURISDICTION 

53.  The  "Court"  mentioned  in  Sections  33,  34,  35,  47,  48, 
49,  and  50  of  this  law  means: 

When  the  defendant  in  the  case  is  a  person  under  Siamese 
jurisdiction,  the  Siamese  Court  or  the  International  Court  or 
the  Court  of  Foreign  Causes,  according  to  the  present  rules  of 
competence ; 

In  any  other  case,  the  Court  of  Foreign  Causes. 

CHAPTER  IX 

OFFENCES 

54.  Whoever  represents  as  being  registered  in  Siam  a 
trade-mark  which  is  not  so  registered  and  whoever  knowingly 


SIAM  809 

sells  or  offers  for  sale  articles  bearing  such  a  false  representa- 
tion, shall  be  punished  with  fine  not  exceeding  one  thousand 
ticals.  The  articles  bearing  such  false  representation  shall  be 
forfeited  irrespective  of  the  conviction  or  non-conviction  of  any 
particular  person. 

55.  The  provisions  of  Sections  235,  238  and  239  of  the 
Penal  Code  apply  to  the  unlawful  use  of  any  trade-name  and  to 
any  goods  bearing  a  trade-name  unlawfully  used. 

56.  The  penalties  for: 

counterfeiting  any  trade-mark,  or  fraudulently  imitating  a 
trade-mark  in  a  manner  calculated  to  deceive  a  purchaser;  or 
importing,  selling  or  exposing  for  sale  goods  bearing  a  counter- 
feit trade-mark  or  an  imitation  trade-mark,  are  provided  by 
Sections  236  to  239  of  the  Penal  Code.  These  Sections  apply 
whether  the  trade-mark  be  registered  or  not. 

CHAPTER  X 

EXECUTION 

57.  The  Minister  of  Agriculture  shall  have  charge  and 
control  of  the  execution  of  the  present  law.    It  shall  be  lawful 
for  him  to  frame  regulation  for  such  execution  and  to  fix  the 
scale  of  fees  for  any  registration,  delivery  of  copies,  examina- 
tion of  Registers  or  other  acts  to  be  done  under  or  by  virtue 
of  this  Law. 


SIERRA  LEONE 

ORDINANCE  [NO.  17]  OF  SEPTEMBER  23, 1913 

Short  title 

1.  This  Ordinance  may  be  cited  as  the  Trade  Mark  Ordi 
nance,  1913. 

DEFINITIONS 
Interpretation 

2.  For  the  purpose  of  this  Ordinance,  nnless  the  context 
otherwise  requires : 

A  "Mark"  includes  a  device,  brand,  heading,  label,  ticket, 
name,  signature,  word,  letter,  numeral,  or  any  combination 
thereof. 

A  "Trade  Mark'*  means  a  mark  used  or  proposed  to  be 
used,  upon  or  in  connection  with  goods,  for  the  purposes  of 
indicating  that  they  are  the  goods  of  the  proprietor  of  such 
trade  mark  by  virtue  of  manufacture,  selection,  certification, 
dealing  with,  or  offering  for  sale. 

A  ' ' Registrable  Trade  Mark"  means  a  trade  mark  which 
is  capable  of  registration  under  the  provisions  of  this  Ordinance. 

A  "Registered  Trade  Mark"  means  a  trade  mark  which  is 
actually  on  the  register. 

"Prescribed"  means,  in  relation  to  proceedings  before  the 
Court,  prescribed  by  rules  of  Court;  and,  in  other  cases,  pre- 
scribed by  this  Ordinance  or  any  rules  made  thereunder. 

"Registrar"  means  the  Master  and  Registrar  of  the  Court, 
the  Deputy  Master,  or  such  other  person  as  the  Governor  may 
appoint  to  be  Registrar  of  Trade  Marks. 

"Court"  means  the  Supreme  Court  of  the  Colony  in  its 
original  jurisdiction. 

"Goods"  means  anything  which  is  the  subject  of  trade, 
manufacture,  or  merchandise. 

"Colony"  includes  Protectorate. 

REGISTER  OF  TRADE  MARKS 

3.  There  shall  be  kept  at  the  Registrar's  Office  a  book 
called  the  register  of  trade  marks,  wherein  shall  be  entered  all 
registered  trade  marks  with  the  names  and  addresses  of  their 
proprietors,  the  dates  on  which  applications  were  made  for 
their  registration,  as  hereinafter  provided,  notification  of  as- 
signments, and  of  transmissions  of  trade  marks,  and  such  other 
matters  as  may  be  from  time  to  time  prescribed. 


SIERRA  LEONE  811 

No  trust  to  be  entered  on  register 

4.  There  shall  not  be  entered  in  the  register  kept  under 
this  Ordinance  any  notice  of  any  trust  expressed,  implied  or 
constructive,  nor  shall  any  such  notice  be  receivable  by  the 
Registrar. 

Inspection  of  register  and  granting  of  certified  copies 

5.  The  register  kept  under  this  Ordinance  shall  at  all  con- 
venient times  be  open  to  the  inspection  of  the  public,  subject  to 
the  provisions  of  this  Ordinance  and  to  such  rules  as  may  be 
prescribed ;  and  certified  copies  of  any  entry  in  any  such  regis- 
ter shall  be  given  to  any  persons  requiring  the  same,  on  pay- 
ment of  the  prescribed  fee. 

REGISTEABLE  TRADE  MARKS 
Trade  marks.    What  marks  are  registrable  as  such 

6.  A  registrable  trade  mark  must  contain  or  consist  of  at 
least  one  of  the  following  essential  particulars : — 

(1)  The  name  of  a  company,  individual  or  firm  represented 
in  a  special  or  particular  manner ; 

(2)  The  signature  of  the  applicant  for  registration  or  some 
predecessor  in  his  business; 

(3)  An  invented  word  or  invented  words; 

(4)  A  word  or  words  having  no  direct  reference  to  the 
character  or  quality  of  the  goods  and  not  being  according  to 
its  ordinary  signification  a  geographical  name  or  a  surname ; 

(5)  Any  other  distinctive  mark,  but  a  name,  signature,  or 
word  or  words,  other  than  such  as  fall  within  the  description 
in  the  above  paragraphs  (1),  (2),  (3),  and  (4),  shall  not,  except 
by  order  of  the  Court,  be  deemed  a  distinctive  mark. 

For  the  purposes  of  this  section  "distinctive"  shall  mean 
adapted  to  distinguish  the  goods  of  the  proprietor  of  the  trade 
mark  from  those  of  other  persons. 

In  determining  whether  a  trade  mark  is  so  adapted,  the 
Court  may,  in  the  case  of  a  trade  mark  in  actual  use,  take  into 
consideration  the  extent  to  which  such  use  has  rendered  such 
trade  mark  in  fact  distinctive  for  the  goods  with  respect  to 
which  it  is  registered  or  proposed  to  be  registered. 

Provided  always  that  any  mark  which  has  been  registered 
as  a  distinctive  mark  in  England  under  the  Trade  Marks  Act, 
1915,  shall  be  deemed  to  be  a  distinctive  mark  for  the  purpose 
of  this  Ordinance. 

Connection  of  trade  mark  with  goods 

7.  A  trade  mark  must  be  registered  for  particular  goods 
or  classes  of  goods.    The  applicant  shall  in  his  application  state 
goods  included  in  one  class  only.    If  the  applicant  desires  to 


812  SIERRA  LEONE 

register  the  same  mark  for  goods  falling  in  more  than  one  class, 
he  shall  make  a  separate  application  in  respect  of  each  class, 
and  each  of  such  applications  shall  be  treated  for  all  purposes 
as  a  separate  and  distinct  application  and  the  entries  on  the 
register  in  pursuance  of  such  application  shall  for  all  purposes 
be  deemed  to  relate  to  separate  and  distinct  trade  marks. 
Coloured  trade  marks 

8.  A  trade  mark  may  be  limited  in  whole  or  in  part  to  one 
or  more  specified  colours,  and  in  such  case  the  fact  that  it  is  so 
limited  shall  be  taken  into  consideration  by  any  tribunal  having 
to  decide  on  the  distinctive  character  of  such  trade  mark.    If 
and  so  far  as  a  trade  mark  is  registered  without  limitation  of 
colour  it  shall  be  deemed  to  be  registered  for  all  colours. 

Further  restriction  on  registration 

9.  (1)  It  shall  not  be  lawful  to  register  as  a  trade  mark 
or  part  of  a  trade  mark  any  matter  the  use  of  which  would,  by 
reason  of  its  being  calculated  to  deceive  or  otherwise,  be  dis- 
entitled to  protection  in  a  Court  of  Justice,  or  would  be  con- 
trary to  law  or  morality,  or  any  scandalous  design. 

(2)  No  trade  mark  shall  be  registered  for  any  goods  set 
forth  and  included  in  classes  23,  24,  and  25*  of  the  Third  Part  of 
the  Schedule  hereto,  unless  such  trade  mark  has  been  and  is 
registered  in  the  Union  Kingdom  in  respect  of  such  goods. 

REGISTRATION  OF  TRADE  MARKS 
Application  for  registration 

10.  (1)  Any  person  claiming  to  be  the  proprietor  of  a 
trade  mark  may  by  himself  or  his  agent  apply  to  the  Registrar 
for  the  registration  thereof. 

(2)  The  application  must  be  made  in  the  prescribed  form, 
and  must  be  accompanied  by  not  less  than  three  representations 
of  the  trade  mark  and  by  a  stereotype  block  of  such  represen- 
tation. 

(3)  The  applicant  must  state  the  particular  goods  or  classes 
of  goods  in  connection  with  which  he  desires  his  trade  mark  to 
be  registered. 

(4)  The  application  must  be  left  with  or  sent  by  post  to 
the  Registrar. 

(5)  The  date  of  the  delivery  or  receipt  of  the  application 
shall  be  endorsed  thereon  and  recorded  in  the  Registrar's  Office. 

(6)  When  an  applicant  for  the  registration  of  a  trade  mark 
is  out  of  the  Colony  at  the  time  of  making  the  application  he 

*  Class  23.     (a)  Cotton  yarn;   (b)  sewing  cotton. 
Class  24.    Cotton  piece  goods  of  all  kinds. 
Class  25.    Cotton  goods  not  included  in  other  classes. 


SIERRA  LEONE  813 

shall  give  the  Registrar  an  address  for  service  in  the  Colony, 
and  if  he  fails  to  do  so  the  Registrar  may  refuse  to  proceed 
with  the  application  until  the  address  has  been  given. 
Action  in  regard  to  application 

11.  (1)  Subject  to  the  provisions  of  this  Ordinance  the 
Registrar  may  refuse  such  application  as  aforesaid,  or  may 
accept  it  absolutely  or  subject  to  conditions,  amendments,  or 
modifications. 

(2)  In  case  of  any  such  refusal  or  conditional  acceptance, 
the  Registrar  shall,  if  required  by  the  applicant,  state  in  writing 
the  grounds  of  his  decision  and  the  materials  used  by  him  in 
arriving  at  the  same,  and  such  decision  shall  be  subject  to  ap- 
peal to  the  Court. 

(3)  An  appeal  under  this  section  shall  be  made  in  the  pre- 
scribed manner,  and  on  such  appeal  the  Court  shall,  if  required, 
hear  the  applicant  and  the  Registrar,  and  shall  make  an  order 
determining  whether,  and  subject  to  what  conditions,  amend- 
ments, or  modifications,  if  any,  the  application  is  to  be  accepted. 

Disclaimer 

12.  If  a  trade  mark  contains  parts  not  separately  regis- 
tered by  the  proprietor  as  trade  marks,  or  if  it  contains  matter 
common  to  the  trade  or  otherwise  of  a  non-distinctive  character, 
the  Registrar  or  the  Court,  in  deciding  whether  such  trade  mark 
shall  be  entered  or  shall  remain  upon  the  register,  may  require, 
as  a  condition  of  its  being  upon  the  register,  that  the  proprietor 
shall  disclaim  any  right  to  the  exclusive  use  of  any  part  or  parts 
of  such  trade  mark,  or  all  or  any  portion  of  such  matter,  to 
the  exclusive  use  of  which  they  hold  him  not  to  be  entitled,  or 
that  he  shall  make  such  other  disclaimer  as  they  may  consider 
needful  for  the  purpose  of  defining  his  rights  under  such  regis- 
tration: Provided  always  that  no  disclaimer  upon  the  register 
shall  affect  any  rights  of  the  proprietor  of  a  trade  mark  except 
such  as  arise  out  of  the  registration  of  the  trade  mark  in  respect 
of  which  the  disclaimer  is  made. 

Advertisement  of  application 

13.  Every  application  for  registration  of  a  trade  mark 
under  this  Ordinance  and  a  representation  of  such  mark  shall, 
as  soon  as  may  be  after  its  receipt,  be  advertised  by  the  Regis- 
trar in  the  Gazette  unless  the  Registrar  refuses  to  entertain 
the  application. 

Opposition  to  registration 

14.  (1)  Any  person  may,  within  three  months,  or  such 
further  time,  not  exceeding  nine  months  in  all,  as  the  Registrar 
may  allow,  from  the  date  of  the  advertisement  of  the  applica- 


814  SIERRA  LEONE 

tion,  give  notice  to  the  Registrar  of  opposition  to  such  regis- 
tration. 

(2)  Such  notice  shall  be  given  in  writing  and  in  duplicate, 
and  shall  include  a  statement  of  the  grounds  of  opposition. 

(3)  The  Registrar  shall  send  a  copy  of  such  notice  to  the 
applicant,  and,  within  one  month  after  the  receipt  of  such  notice, 
or  such  further  time  not  exceeding  three  months  in  all,  as  the 
Registrar  may  allow,  the  applicant  shall  send  to  the  Registrar 
a  counter-statement  in  duplicate  of  the  grounds  on  which  he 
relies  for  his  application,  and,  if  he  does  not  do  so,  he  shall  be 
deemed  to  have  abandoned  his  application. 

(4)  If  the  applicant  send  such  counter-statement,  the  Regis- 
trar shall  furnish  a  copy  thereof  to  the  person  giving  notice  of 
opposition,  and  shall  require  him  to  give  security  in  such  man- 
ner and  to  such  amount  as  the  Registrar  may  require  for  such 
costs  as  may  be  awarded  in  respect  of  such  opposition,  and  if 
such  security  is  not  given  within  fourteen  days  after  such  re- 
quirement was  made  or  such  further  time  as  the  Registrar  may 
allow,  the  opposition  shall  be  deemed  to  be  withdrawn. 

(5)  If  the  person  who  gave  notice  of  opposition  duly  gives 
such  security  as  aforesaid,  the  Registrar  shall  inform  the  ap- 
plicant thereof  in  writing,  and  thereafter  the  case  shall  be 
deemed  to  stand  for  the  determination  of  the  Court. 

(6)  Where  the  opponent  is  out  of  the  Colony,  he  shall,  with 
the  notice  of  opposition  to  registration,  give  the  Registrar  an 
address  for  service  in  the  Colony. 

Case — how  brought  before  the  Court 

15.  (1)  When  a  case  stands  for  the  determination  of  the 
Court  under  the  provisions  of  the  last  preceding  section,  the 
Registrar  shall  require  the  applicant  to  make  a  written  applica- 
tion to  the  Court  for  an  order  that,  notwithstanding  the  oppo- 
sition of  which  notice  has  been  given,  the  registration  of  trade 
mark  be  proceeded  with  by  the  Registrar,  or  to  take  such  other 
proceedings  as  may  be  proper  and  necessary  for  the  determina- 
tion of  the  case  by  the  Court. 

(2)  The  applicant  shall  thereupon  make  his  application  or 
take  such  other  proceedings  as  aforesaid,  within  the  period  of 
one  month  above  named  or  such  further  time  as  the  Registrar 
may  allow,  and  shall  also  within  the  like  period  give  notice 
thereof  to  the  Registrar. 

(3)  If  the  applicant  shall  fail  to  make  such  application  or 
to  take  such  other  proceedings,  of  which  failure  the  non-receipt 
by  the  Registrar  of  the  said  notice  shall  be  sufficient  proof,  the 
applicant  shall  be  deemed  to  have  abandoned  his  application. 


SIERRA  LEONE  815 

Costs 

16.  The  Court  shall  have  power  in  proceedings  under  the 
last  two  preceding  sections  of  this  Ordinance  to  award  to  any 
party  such  costs  as  it  may  consider  reasonable,  and  to  direct 
how  and  by  what  parties  they  are  to  be  paid. 

Date  of  registration 

17.  When  an  application  for  registration  of  a  trade  mark 
has  been  accepted  and  has  not  been  opposed,  and  the  time  for 
notice  of  opposition  has  expired,  or  having  been  opposed  the 
opposition  has  been  decided  in  favour  of  the  applicant,  the 
Registrar  shall,  unless  the  Court  otherwise  direct,  register  the 
said  trade  mark,  and  the  trade  mark,  when  registered,  shall  be 
registered  as  of  the  date  of  the  application  for  registration, 
and  such  date  be  deemed  for  the  purposes  of  this  Ordinance  to 
be  the  date  of  registration. 

Certificate  of  registration 

18.  The  Registrar  shall  have  a  seal,  and  on  the  registra- 
tion of  a  trade  mark  the  Registrar  shall  issue  to  the  applicant 
a  certificate  in  the  prescribed  form  of  the  registration  of  such 
trade  mark  under  the  hand  and  seal  of  the  Registrar. 

Advertisement  of  application 

19.  When  an  application  for  registration  of  a  trade  mark 
has  been  accepted,  whether  absolutely  or  subject  to  conditions, 
the  Registrar  shall,  as  soon  as  may  be  after  such  acceptance, 
cause  the  application  as  accepted  to  be  advertised  in  the  Gazette. 
Such  advertisement  shall  set  forth  all  conditions  subject  to 
which  the  application  has  been  accepted. 

Limit  of  time  for  proceeding  with  application 

20.  Where  the  registration  of  a  trade  mark  is  not  com- 
pleted within  twelve  months  from  the  date  of  the  application, 
by  reason  of  default  on  the  part  of  the  applicant,  the  Registrar 
may,  after  giving  notice  in  writing  of  the  non-completion  to  the 
applicant  or  to  his  agent  (if  any),  treat  the  application  as  aban- 
doned unless  it  is  completed  before  the  expiration  of  fourteen 
days  from  such  notice  or  of  such  further  time  as  the  Registrar 
may  in  special  cases  permit. 

IDENTICAL  TRADE  MASKS 
Identical  marks 

21.  Except  by  order  of  the  Court,  no  trade  mark  shall  be 
registered  in  respect  of  any  goods  or  description  of  goods  which 
is  identical  with  one  belonging  to  a  different  proprietor  which 
is  already  on  the  register  with  respect  to  such  goods  or  descrip- 
tion of  goods,  or  so  nearly  resembling  such  a  trade  mark  as  to 
be  calculated  to  deceive. 


81(>  SIERRA  LEONE 

Rival  claims  to  identical  marks 

22.  Where  each  of  several  persons  claims  to  be  proprietor 
of  the  same  trade  marks  or  of  nearly  identical  trade  marks  in 
respect  of  the  same  goods  or  description  of  goods,  and  to  be 
registered  as  such  proprietor,  the  Registrar  may  refuse  to  regis- 
ter any  of  them  until  their  rights  have  been  determined  by  the 
Court  or  have  been  settled  by  agreement  in  a  manner  approved 
by  him. 

Concurrent  user 

23.  In  case  of  honest  concurrent  user  or  of  other  special 
circumstances  which,  in  the  opinion  of  the  Court,  make  it  proper 
so  to  do,  the  Court  may  permit  the  registration  of  the  same 
trade  mark,  or  of  nearly  identical  trade  marks,  for  the  same 
goods  or  description  of  goods  by  more  than  one  proprietor, 
subject  to  such  conditions  and  limitations,  if  any,  as  to  mode  or 
place  of  user  or  otherwise,  as  it  may  think  it  right  to  impose. 

ASSIGNMENT 
Assignment  and  transmission  of  trade  mark 

24.  A  trade  mark  when  registered  shall  be  assigned  and 
transmitted  only  in  connection  with  the  good-will  of  the  busi- 
ness concerned  in  the  particular  goods  or  classes  of  goods  for 
which  it  has  been  registered,  and  shall  be  determinable  with 
that  good-will. 

Apportionment  of  marks  on  dissolution  of  partnerships 

25.  In  any  case  where  from  any  cause,  whether  by  reason 
of  dissolution  of  partnership  or  otherwise,  a  person  ceases  to 
carry  on  business,  and  the  good-will  of  such  person  does  not 
pass  to  one  successor  but  is  divided,  the  Registrar  may  (sub- 
ject to  the  provisions  of  this  Ordinance  as  to  associated  trade 
marks),  on  the  application  of  the  parties  interested,  permit  an 
apportionment  of  the  registered  trade  marks  of  the  person 
among  the  persons  in  fact  continuing  the  business,  subject  to 
such  conditions  and  modifications,  if  any,  as  he  may  think  neces- 
sary in  the  public  interest.    Any  decision  of  the  Registrar  under 
this  section  shall  be  subject  to  appeal  to  the  Court. 

ASSOCIATED  TRADE  MARKS 

26.  If  application  be  made  for  the  registration  of  a  trade 
mark  so  closely  resembling  a  trade  mark  of  the  applicant  al- 
ready on  the  register  for  the  same  goods  or  description  of  goods 
as  to  be  calculated  to  deceive  or  cause  confusion  if  used  by  a 
person  other  than  the  applicant,  the  tribunal  hearing  the  appli- 
cation may  require  as  a  condition  of  registration  that  such  trade 
marks  shall  be  entered  on  the  register  as  associated  trade  marks. 


SIERRA  LEONE  817 

Combined  trade  marks 

27.  If  the  proprietor  of  a  trade  mark  claims  to  be  entitled 
to  the  exclusive  use  of  any  portion  of  such  trade  marks  sepa- 
rately, he  may  apply  to  register  the  same  as  separate  trade 
marks.    Each  such  separate  trade  mark  must  satisfy  all  the 
conditions  and  shall  have  all  the  incidents  of  an  independent 
trade  mark,  except  that  when  registered  it  and  the  trade  mark 
of  which  it  forms  a  part  shall  be  deemed  to  be  associated  trade 
marks  and  shall  be  entered  on  the  register  as  such,  but  the  user 
of  the  whole  trade  mark  shall  for  the  purposes  of  this  Ordinance 
be  deemed  to  be  also  a  user  of  such  registered  trade  marks 
belonging  to  the  same  proprietor  as  it  contains. 

Series  of  trade  marks 

28.  When  a  person  claiming  to  be  the  proprietor  of  several 
trade  marks  for  the  same  description  of  goods  which,  while 
resembling  each  other  in  the  material  particulars  thereof,  yet 
differ  in  respect  of — 

(1)  Statements  of  the  goods  for  which  they  are  respec- 
tively used  or  proposed  to  be  used;  or 

(2)  Statements   of  number,  price,  quality,  or  names   of 
places;  or 

(3)  Other  matter  of  a  non-distinctive  character  which  does 
not  substantially  affect  the  identity  of  the  trade  mark;  or 

(4)  Colour; 

seeks  to  register  such  trade  marks,  they  may  be  registered  as  a 
series  in  one  registration.  All  the  trade  marks  in  a  series  of 
trade  marks  so  registered  shall  be  deemed  to  be,  and  shall  be 
registered  as,  associated  trade  marks. 

Assignment  and  user  of  associated  trade  marks 

29.  Associated  trade  marks  shall  be  assignable  or  trans- 
missible only  as  a  whole  and  not  separately,  but  they  shall  for 
all  other  purposes  be  deemed  to  have  been  registered  as  sepa- 
rate trade  marks:  Provided  that,  where  under  the  provisions 
of  this  Ordinance  user  of  a  registered  trade  mark  is  required 
to  be  proved  for  any  purpose,  the  tribunal  may,  if  and  so  far 
as  it  shall  think  right,  accept  user  of  an  associated  registered 
trade  mark,  or  of  the  trade  mark  with  additions  or  alterations 
not  substantially  affecting  its  identity, .  as  an  equivalent  for 
such  user. 

DURATION  AND  RENEWAL  OF  REGISTRATION 
Duration  of  registration 

30.  The  registration  of  a  trade  mark  shall  be  for  a  period 
of  fourteen  years,  but  may  be  renewed  from  time  to  time  in 
accordance  with  the  provisions  of  this  Ordinance, 


818  SIERRA  LEONE 

Renewal  of  registration 

31.  The  Registrar  shall,  on  application  made  by  the  regis- 
tered proprietor  of  a  trade  mark  in  the  prescribed  manner  and 
within  the  prescribed  period,  renew  the  registration  of  such 
trade  mark  for  a  period  of  fourteen  years,  from  the  expiration 
of  the  original  registration  or  of  the  last  renewal  of  registra- 
tion, as  the  case  may  be,  which  date  is  herein  termed  "the 
expiration  of  the  last  registration.'* 

Procedure  on  expiry  of  period  of  registration 

32.  At  the  prescribed  time,  before  the  expiration  of  the 
last  registration  of  a  trade  mark,  the  Registrar  shall  send  notice 
in  the  prescribed  manner  to  the  registered  proprietor  at  his 
registered  address  of  the  date  at  which  the  existing  registration 
will  expire  and  the  conditions  as  to  payment  of  fees  and  other- 
wise upon  which  a  renewal  of  such  registration  may  be  obtained, 
and  if,  at  the  expiration  of  the  time  prescribed  in  that  behalf, 
such  conditions  have  not  been  duly  complied  with,  the  Registrar 
may  remove  such  trade  mark  from  the  register,  subject  to  such 
conditions  (if  any)  as  to  its  restoration  to  the  register  as  may 
be  prescribed. 

Status  of  unrenewed  trade  mark 

33.  Where  a  trade  mark  has  been  removed  from  the  regis- 
ter for  non-payment  of  the  fee  for  renewal,  such  trade  mark 
shall,  nevertheless,  for  the  purpose  of  any  application  for  reg- 
istration during  one  year  next  after  the  date  of  such  removal, 
be  deemed  to  be  a  trade  mark  which  is  already  registered,  unless 
it  is  shown  to  the  satisfaction  of  the  Registrar  that  there  has 
been  no  bona  fide  trade  user  of  such  trade  mark  during  the  two 
years  immediately  preceding  such  removal. 

CORBECTION  AND  RECTIFICATION  OF  APPLICATIONS,  OB  OF 

THE  REGISTER 
Registrar  may  correct  formal  errors  in  applications 

34.  The  Registrar  may,  on  request  in  writing,  accom- 
panied by  the  prescribed  fee, 

(1)  Correct  any  clerical  error  in  or  in  connection  with  an 
application  for  the  registration  of  a  trade  mark;  or 

(2)  Permit  an  applicant  for  registration  of  a  trade  mark 
to  amend  his  application  by  omitting  any  particular  goods  or 
classes  of  goods  in  connection  with  which  he  has  desired  the 
trade  mark  to  be  registered. 

Correction  of  register 

35.  The  Registrar  may,  on  request  made  in  the  prescribed 
manner  by  the  registered  proprietor  or  by  some  person  entitled 
by  law  to  act  in  his  name, — 


SIERRA  LEONE  819 

(1)  Correct  any  error  in  the  name  or  address  of  the  regis- 
tered proprietor  of  a  trade  mark ;  or 

(2)  Enter  any  change  in  the  name  or  address  of  the  person 
who  is  registered  as  proprietor  of  a  trade  mark ;  or 

(3)  Cancel  the  entry  of  a  trade  mark  on  the  register;  or 

(4)  Strike  out  any  goods  or  classes  of  goods  from  those  for 
which  a  trade  mark  is  registered ;  or 

(5)  Enter  a  disclaimer  or  memorandum  relating  to  a  trade 
mark  which  does  not  in  any  way  extend  the  rights  given  by  the 
existing  registration  of  such  trade  mark. 

Any  decision  of  the  Registrar  under  this  section  shall  be 
subject  to  appeal  to  the  Court. 

Entry  in  register  of  assignments 

36.  Subject  to  the  provisions  of  this  Ordinance,  where  a 
person  becomes  entitled  by  assignment,  transmission,  or  other 
operation  of  law,  to  a  registered  trade  mark,  the  Registrar  shall, 
on  request  made  in  the  prescribed  manner,  and  on  proof  of  title 
to  his  satisfaction,  cause  the  name  and  address  of  such  person 
to  be  entered  as  proprietor  of  the  trade  mark  on  the  register 
of  trade  marks:  Provided  that  any  decision  of  the  Registrar 
under  this  section  shall  be  subject  to  appeal  to  the  Court. 

Application  to  alter  registered  trade  mark 

37.  (1)  The  registered  proprietor  of  any  registered  trade 
mark  may  apply  to  the  Registrar  for  leave  to  add  to  or  alter 
such  mark  in  any  manner  not  substantially  affecting  the  identity 
of  the  same,  and  the  Registrar  may  refuse  or  grant  leave  on 
such  terms  as  he  may  think  fit,  but  any  refusal  or  conditional 
permission  shall  be  subject  to  appeal  to  the  Court. 

Prescribed  manner 

(2)  If  leave  be  granted,  the  mark  as  altered  shall  be  adver- 
tised in  the  prescribed  manner;  and  the  Registrar  shall,  on 
payment  of  the  prescribed  fee,  cause  the  register  to  be  altered 
in  conformity  with  the  order. 

Rectification  of  the  register  by  the  Court 

38.  (1)  The  Court  may,  on  the  application  of  any  person 
aggrieved  by  the  omission  without  sufficient  cause  of  the  name 
of  any  person  or  of  any  other  particulars  from  the  register 
kept  under  this  Ordinance,  or  by  any  entry  made  without  suf- 
ficient cause  in  any  such  register,  or  by  any  entry  wrongfully 
remaining  on  the  register,  make  such  order  for  making,  expung- 
ing, or  varying  the  entry  as  the  Court  thinks  fit,  or  the  Court 
may  refuse  the  application,  and  in  either  case  may  make  such 
order  with  respect  to  the  costs  of  the  proceedings  as  the  Court 
thinks  fit. 


820  SIERRA  LEONE 

(2)  The  Court  may  in  any  proceeding  under  this  section 
decide  any  question  that  it  may  be  necessary  or  expedient  to 
decide  for  the  rectification  of  a  register,  and  may  direct  an  issue 
to  be  tried  for  the  decision  of  any  question  of  fact,  and  may 
award  damages  to  the  party  aggrieved. 

(3)  Notice  of  any  intended  application  to  the  Court  under 
this  section  shall  be  given  to  the  Registrar  by  the  applicant,  and 
the  Registrar  shall  be  entitled  to  be  heard  on  the  application. 

(4)  In  case  of  fraud  in  the  registration  or  transmission  of 
a  registered  trade  mark,  the  Registrar  may  himself  apply  to  the 
Court  under  the  provisions  of  this  section. 

(5)  If  any  order  of  the  Court  rectifying  the  register  is 
made,  the  Registrar  shall  on  proof  thereof  and  on  payment  of 
the  prescribed  fee  cause  the  register  to  be  altered  in  conformity 
with  such  order. 

Non-user  of  trade  mark 

39.  A  registered  trade  mark  may,  on  the  application  to 
the  Court  of  any  person  aggrieved,  be  taken  off  the  register  in 
respect  of  any  of  the  goods  for  which  it  is  registered,  on  the 
ground  that  it  was  registered  by  the  proprietor  or  a  predeces- 
sor in  title  without  any  bona  fide  intention  to  use  the  same  in 
connection  with  such  goods  and  there  has  in  fact  been  no  bona 
fide  user  of  the  same  in  connection  therewith,  or  on  the  ground 
that  there  has  been  no  bona  fide  user  of  such  trade  mark  in 
connection  with  such  goods  during  the  five  years  immediately 
preceding  the  application,  unless  in  either  case  such  non-user  is 
shown  to  be  due  to  special  circumstances  in  the  trade  and  not 
to  any  intention  not  to  use  or  to  abandon  such  trade  mark  in 
respect  of  the  goods. 

EFFECT  OF  REGISTRATION 
Powers  of  registered  proprietor 

40.  Subject  to  the  provisions  of  this  Ordinance — 

(1)  The  person  for  the  time  being  entered  in  the  register 
as  proprietor  of  a  trade  mark  shall,  subject  to  any  rights 
appearing  from  such  register  to  be  vested  in  any  other  person, 
have  power  to  assign  the  same,  and  to  give  effectual  receipts 
for  any  consideration  for  such  assignment : 

(2)  Any  equities  in  respect  of  a  trade  mark  may  be  en- 
forced in  like  manner  as  in  respect  of  any  other  personal 
property. 

Rights  of  proprietor  of  trade  mark 

41.  Subject  to  the  provisions  of  section  43  of  this  Ordi- 
nance and  to  any  limitations  and  conditions  entered  upon  the 
register,  the  registration  of  a  person  as  proprietor  of  a  trade 


SIERRA  LEONE  821 

mark  shall,  if  valid,  give  to  such  person  the  exclusive  right  to 
the  use  of  such  trade  mark  upon  or  in  connection  with  the  goods 
in  respect  of  which  it  is  registered:  Provided  always  that, 
where  two  or  more  persons  are  registered  proprietors  of  the 
same  (or  substantially  the  same)  trade  mark  in  respect  of  the 
same  goods,  no  rights  of  exclusive  user  of  such  trade  mark  shall 
(except  so  far  as  their  respective  rights  have  been  denned  by 
the  Court)  be  acquired  by  any  one  of  such  persons  as  against 
any  other  by  the  registration  thereof,  but  each  of  such  persons 
shall  otherwise  have  the  same  rights  as  if  he  were  the  sole  regis- 
tered proprietor  thereof. 

Registration  to  be  prima  facie  evidence  of  validity 

42.  In  all  legal  proceedings  relating  to  a  registered  trade 
mark  (including  applications  under  section  38  of  this  Ordi- 
nance) the  fact  that  a  person  is  registered  as  proprietor  of  such 
trade  mark  shall  be  prima  facie  evidence  of  the  validity  of  the 
original  registration  of  such  trade  mark  and  of  all  subsequent 
assignments  and  transmissions  of  the  same. 

Registration  to  be  conclusive  after  seven  years 

43.  In  all  legal  proceedings  relating  to  a  registered  trade 
mark  (including  applications  under  section  38  of  this  Ordi- 
nance), the  original  registration  of  such  trade  mark  shall,  after 
the  expiration  of  seven  years  from  the  date  of  such  original 
registration  (or  seven  years  from  the  commencement  of  this 
Ordinance,  whichever  shall  last  happen),  be  taken  to  be  valid  in 
all  respects  unless  such  original  registration  was  obtained  by 
fraud,  or  unless  the  trade  mark  offends  against  the  provisions 
of  section  9  of  this  Ordinance:  Provided  that  nothing  in  this 
Ordinance  shall  entitle  the  proprietor  of  a  registered  trade 
mark  to  interfere  with  or  restrain  the  user  by  any  person  of  a 
similar  trade  mark  upon  or  in  connection  with  goods  upon  or  in 
connection  with  which  such  person  has,  by  himself  or  his  prede- 
cessors in  business,  continuously  used  such  trade  mark  from  a 
date  anterior  to  the  user  of  the  first-mentioned  trade  mark  by 
the  proprietor  thereof  or  his  predecessors  in  business,  or  to 
object  (on  such  user  being  proved)  to  such  person  being  put 
upon  the  register  for  such  similar  trade  mark  in  respect  of  such 
goods  under  the  provisions  of  section  23  of  this  Ordinance. 

No  protection  for  unregistered  trade  marks 

44.  No  person  shall  be  entitled  to  institute  any  proceed- 
ings to  prevent,  or  to  recover  damages  for,  the  infringement  of 
an  unregistered  trade  mark  unless  such  trade  mark  has  been 
in  use  for  not  less  than  three  years  prior  to  the  commencement 
of  such  proceedings,  and  has  been  refused  registration  under 

PATENT  DEPARTMENT 

ttSK  RUBBER  CO 
CUDAHYt 


822  SIERRA  LEONE 

this  Ordinance.    The  Registrar  may,  on  request,  grant  a  cer- 
tificate that  such  registration  has  been  refused. 
Action  for  infringement 

45.  In  an  action  for  the  infringement  of  a  trade  mark,  the 
Court  trying  the  question  of  infringement  shall  admit  evidence 
of  the  usages  of  the  trade  in  respect  to  the  get-up  of  the  goods 
for  which  the  trade  mark  is  registered,  and  of  any  trade  marks 
or  get-up  legitimately  used  in  connection  with  such  goods  by 
other  persons. 

No  interference  with  bona  fide  user  of  name  or  description 

of  goods 

46.  No  registration  under  this  Ordinance  shall  interfere 
with  any  bona  fide  use  by  a  person  of  his  own  name  or  place  of 
business  or  that  of  any  of  his  predecessors  in  business,  or  the 
use  by  any  person  of  any  bona  fide  description  of  the  character 
or  quality  of  his  goods. 

Action  for  passing  off  goods 

47.  Nothing  in  this  Ordinance  shall  be  deemed  to  affect 
the  rights  of  action  against  any  person  for  passing  off  goods  as 
those  of  another  person  or  the  remedies  in  respect  thereof. 

LEGAL  PROCEEDINGS 
Certificates  of  validity 

48.  In  any  legal  proceeding  in  which  the  validity  of  the 
registration  of  a  registered  trade  mark  comes  into  question 
and  is  decided  in  favour  of  the  proprietor  of  such  trade  mark, 
the  Court  may  certify  the  same,  and  if  it  so  certifies  then,  in  any 
subsequent  legal  proceeding  in  which  such  validity  comes  into 
question,  the  proprietor  of  the  said  trade  mark  on  obtaining  a 
final  order  or  judgment  in  his  favour  shall  have  his  full  costs, 
charges,  and  expenses  as  between  solicitor  and  client,  unless  in 
such  subsequent  proceeding  the  Court  certifies  that  he  ought  not 
to  have  the  same. 

Procedure  before  the  Court 

49.  Every  application  made  to  the  Court  under  sections 
37  and  38  and  all  proceedings  thereunder  shall  be  conducted  in 
such  manner  as  the  Court  may  direct. 

Costs 

50.  In  all  proceedings  before  the  Court  under  this  Ordi- 
nance, the  costs  of  the  Registrar  shall  be  in  the  discretion  of  the 
Court,  but  the  Registrar  shall  not  be  ordered  to  pay  the  costs 
of  any  other  of  the  parties. 

EVIDENCE 
Certified  copies  to  be  admitted  as  evidence 

51.  Printed  or  written  copies  or  extracts,  purporting  to  be 


SIERRA  LEONE  823 

certified  by  the  Registrar,  of  or  from  any  document,  register 
and  other  books  filed  or  kept  under  this  Ordinance  in  his  office, 
shall  be  admitted  in  evidence  in  all  Courts  in  this  Colony,  and 
in  all  proceedings,  without  further  proof  or  production  of  the 
originals. 

Certificate  of  registration  to  be  prima  facie  evidence 

52.  A  certificate  purporting  to  be  under  the  hand  of  the 
Registrar  as  to  any  entry,  matter,  or  thing  which  he  is  author- 
ized by  this  Ordinance,  or  rules  made  thereunder,  to  make  or 
do,  shall  be  prima  facie  evidence  of  the  entry  having  been  made, 
and  of  the  contents  thereof,  and  of  the  matter  or  thing  having 
been  done  or  left  undone. 

Applications  may  be  sent  by  post 

53.  (1)  Any  application,  notice,  or  other  document  author- 
ized or  required  to  be  left  with,  made,  or  given  to  the  Registrar 
or  to  any  other  person  under  this  Ordinance,  may  be  sent  by  a 
registered  letter  through  the  post,  and  if  so  sent  shall  be  deemed 
to  have  been  so  left,  made,  or  given  respectively  at  the  time 
when  the  letter  containing  the  same  would  be  delivered  in  the 
ordinary  course  of  post. 

(2)  In  proving  such  service  or  sending,  it  shall  be  sufficient 
to  prove  that  the  letter  was  properly  addressed  and  registered 
at  the  Post  Office. 

POWERS  AND  DUTIES  OF  REGISTRAR  OF  TRADE  MARKS 
Exercise  of  discretionary  power  by  Registrar 

54.  Where  any  discretionary  or  other  power  is  given  to 
the  Registrar  by  this  Ordinance  or  rules  made  thereunder,  he 
shall  not  exercise  that  power  adversely  to  the  applicant  for 
registration  or  the  registered  proprietor  of  the  trade  mark  in 
question  without  (if  duly  required  so  to  do  within  the  prescribed 
time)  giving  such  applicant  or  registered  proprietor  an  oppor- 
tunity of  being  heard. 

POWER  TO  MAKE  RULES  AS  TO  FEES,  ETC. 
Power  to  make  rules 

55.  (1)  Subject  to  the  provisions  of  this  Ordinance,  and 
subject  to  disallowance  by  His  Majesty,  the  Governor  in  Council 
may  from  time  to  time  make  such  rules,  prescribe  such  forms 
and  generally  do  such  things  as  he  thinks  expedient — 

(a)  For  regulating  the  practice  of  registration  under  this 
Ordinance ; 

(b)  For  classifying  goods  for  the  purposes  of  registration 
of  trade  marks; 

(c)  For  prescribing  the  fees  payable  in  respect  of  appli- 
cations and  registrations  and  other  matters  under  this  Ordi- 


824  SIERRA  LEONE 

nance,  and  the  mode  of  payment  of  the  same; 

(d)  Generally,  for  regulating  all  things  by  this  Ordinance 
placed  under  the  direction  or  control  of  the  Registrar; 

(e)  For  altering  or  revoking  the  provisions  contained  in 
the  schedules  hereto. 

(2)  Unless  and  until  they  be  altered  or  revoked  under  this 
section,  the  provisions  contained  in  the  schedule  hereto  shall  be 
in  force. 

SPECIAL  TRADE  MARKS 
Standardization  of  trade  marks 

56.  Where  any  person  undertakes  the  examination  of  any 
goods  in  respect  of  origin,  material,  mode  of  manufacture, 
quality,  accuracy,  or  other  characteristic,  and  certifies  the  result 
of  such  examination  by  mark  used  upon  or  in  connection  with 
such  goods,  the  Registrar  may,  if  he  shall  judge  it  to  be  to  the 
public  advantage,  permit  such  person  to  register  such  mark  as 
a  trade  mark  in  respect  of  such  goods,  whether  or  not  such 
person  be  a  trader  or  possessed  of  a  goodwill  in  connection  with 
such  examination  and  certifying.     When  so  registered,  such 
trade  mark  shall  be  deemed  in  all  respects  to  be  a  registered 
trade  mark,  and  such  person  to  be  the  proprietor  thereof,  save 
that  such  trade  mark  shall  be  transmissible  or  assignable  only 
by  permission  of  the  Registrar. 

TRADE  MARKS  REGISTERED  IN  GREAT  BRITAIN 
Registration  of  British  trade  marks 

57.  (1)  Any  person  who  has  registered  a  trade  mark  in 
the  United  Kingdom  shall  be  entitled  to  registration  of  his  trade 
mark  under  this  Ordinance  in  priority  to  other  applicants,  and 
such  registration  shall  have  the  same  date  as  the  application  for 
registration  in  the  United  Kingdom :  Provided  that  his  applica- 
tion is  made  within  four  months  from  his  applying  for  protec- 
tion in  the  United  Kingdom;  Provided  further  that  nothing  in 
this  section  contained  shall  entitle  the  proprietor  of  the  trade 
mark  to  recover  damages  for  infringements  happening  prior 
to  the  date  of  the  actual  registration  of  his  trade  mark  in  the 
Colony. 

(2)  The  use  in  the  Colony  during  the  period  aforesaid  of 
the  trade  mark  shall  not  invalidate  the  registration  of  the  trade 
mark. 

(3)  The  application  for  the  registration  of  a  trade  mark 
under  this  section  must  be  made  in  the  same  manner  as  an 
ordinary  application  under  this  Ordinance:  Provided  that  any 
trade  mark,  the  registration  of  which  has  been  duly  obtained 
in  the  United  Kingdom,  may  be  registered  under  this  Ordinance. 


SIERRA  LEONE  825 

Powers  of  Customs  authorities  to  detain  goods  in  certain  cases 

58.  Any  person  who  has  duly  registered  his  trade  mark 
in  respect  of  any  goods  in  the  United  Kingdom  may,  by  himself, 
his  agents  or  representative  in  the  Colony,  on  giving  notice  in 
writing  to  the  Comptroller  of  Customs  that  goods  bearing  a 
mark  so  nearly  resembling  his  trade  mark  as  to  be  well  calcu- 
lated to  deceive  are  being  imported  into  the  Colony,  cause  the 
said  goods  to  be  detained  by  such  Comptroller  of  Customs  until 
the  rights  of  the  matter  have  been  determined  according  to  law : 
Provided  that  any  such  informant  shall  reimburse  to  the  Comp- 
troller of  Customs  all  expenses  and  damages  incurred  in  respect 
of  such  detention  made  on  his  information,  and  of  any  proceed- 
ings consequent  on  such  detention. 

OFFENCES 

59.  If  any  person  makes  or  causes  to  be  made  a  false  entry 
in  the  register  kept  under  this  Ordinance,  or  a  writing  falsely 
purporting  to  be  a  copy  of  an  entry  in  such  register,  or  pro- 
duces or  tenders  or  causes  to  be  produced  or  tendered  in  evi- 
dence any  such  writing,  knowing  the  entry  or  writing  to  be  false, 
he  shall  be  liable,  on  conviction,  to  imprisonment,  with  or  with- 
out hard  labour,  for  a  term  not  exceeding  seven  years. 

60.  (1)  Any  person  who  represents  a  trade  mark  as  regis- 
tered which  is  not  so,  shall  be  liable,  on  summary  conviction,  to 
a  penalty  not  exceeding  five  pounds. 

(2)  A  person  shall  be  deemed  for  the  purposes  of  this  sec- 
tion, to  represent  that  a  trade  mark  is  registered,  if  he  uses  in 
connection  with  the  trade  mark  the  word  "registered,"  or  any 
words  expressing  or  implying  that  registration  has  been  ob- 
tained for  the  trade  mark. 

61.  If  any  person,  without  the  authority  of  His  Majesty, 
uses  in  connection  with  any  trade,  business,  or  profession,  the 
Koyal  Arms  (or  arms  so  closely  resembling  the  same  as  to  be 
calculated  to  deceive)  in  such  manner  as  to  be  calculated  to  lead 
to  the  belief  that  he  is  duly  authorised  so  to  use  the  Royal  Arms, 
he  shall  be  liable,  on  summary  conviction,  to  a  penalty  not 
exceeding  twenty  pounds :  Provided  that  nothing  in  this  section 
shall  be  construed  as  affecting  the  right,  if  any,  of  the  proprie- 
tor of  a  trade  mark  containing  any  such  arms,  device,  emblem, 
or  title  to  continue  to  use  such  trade  mark. 

COSTS 
Jurisdiction  and  practice.    No.  14  of  1904 

62.  So  far  as  the  same  may  be  applicable  the  provisions 
of  the  Supreme  Court  Ordinance,  1904,  and  the  practice  and 


826  SIERRA  LEONE 

procedure  thereunder  shall  extend  and  apply  to  all  proceedings 
under  this  Ordinance. 

INTERNATIONAL  AND  INTERCOLONIAL  ARRANGEMENTS 
International  arrangements — Priority  registration 

63.  (1)  If  His  Majesty  is  pleased  by  Order  in  Council  to 
apply  the  provisions  of  section  91  of  the  Patents  and  Designs 
Act,  1907,*  to  the  Colony,  then  any  person  who  has  applied  for 
protection  for  any  trade  mark  in  any  foreign  State  with  the 
Government  of  which  His  Majesty  has  made  an  arrangement 
under  the  said  section  for  mutual  protection  of  trade  marks, 
shall  be  entitled  to  registration  of  his  trade  mark  under  this 
Ordinance  in  priority  to  other  applicants,  and  such  registration 
shall  take  effect  from  the  same  date  as  the  date  of  the  applica- 
tion in  such  foreign  State. 

(2)  Every  application  for  the  registration  of  a  trade  mark 
under  this  section  shall  be  made  within  four  months  from  the 
date  of  the  application  for  protection  in  such  foreign  State. 

(3)  Nothing  in  this  section  contained  shall  entitle  the  pro- 
prietor of  the  trade  mark  to  recover  damages  for  infringements 
happening  prior  to  the  date  of  the  actual  registration  of  his 
trade  mark  in  the  Colony. 

(4)  The  use  in  the  Colony  during  the  period  aforesaid  of 
the  trade  mark  shall  not  invalidate  the  registration  thereof. 

(5)  The  application  for  the  registration  of  a  trade  mark 
under  this  section  shall  be  made  in  the  same  manner  as  an  ordi- 
nary application  under  this  Ordinance :  Provided  that  any  trade 
mark  the  registration  of  which  has  been  duly  applied  for  in  the 
country  of  origin  may  be  registered  under  this  Ordinance. 

(6)  The  provisions  of  this  section  shall  apply  only  in  the 
case  of  those  foreign  States  with  respect  to  which  His  Majesty 
shall  from  time  to  time  by  Order  in  Council  declare  the  pro- 
vision of  the  aforesaid  section  91  of  the  Patents  and  Designs 
Act,  1907,  to  be  applicable,  and  so  long  only  in  the  case  of  each 
State  as  such  Order  continues  in  force  with  respect  to  that 
State. 

Intercolonial  arrangements 

64.  (1)  Whenever  it  appears  to  the  Governor  in  Council 
that  the  legislature  of  any  British  Possession  has  made  satis- 
factory provision  for  the  protection  in  such  Possession  of  trade 
marks  registered  in  the  Colony,  the  Governor  in  Council  may 
by  Order  apply  all  or  any  of  the  provisions  of  the  last  preceding 
section  of  this  Ordinance,  with  such  variations  or  additions  as 


*See  Great  Britain :  Patents  and  Designs  Act,  1907. 


SIERRA  LEONE  827 

may  seem  fit,  to  trade  marks  registered  in  such  British  Pos- 
session. 

(2)  An  Order  in  Council  under  this  section  shall,  from  a 
date  to  be  mentioned  in  the  Order,  take  effect  as  if  its  provisions 
had  been  contained  in  this  Ordinance. 

GENERAL, 

Provisions  as  to  public  holidays 

65.  Whenever  the  last  day  fixed  by  this  Ordinance,  or  by 
any  rule  for  the  time  being  in  force,  for  leaving  any  document 
with,  or  paying  any  fee  to  the  Registrar,  shall  fall  on  a  Sunday 
or  public  holiday,  it  shall  be  lawful  to  leave  such  document  or 
to  pay  such  fee  on  the  day  next  following  such  Sunday  or  public 
holiday  or  holidays,  if  two  or  more  of  them  occur  consecutively. 

Infants,  lunatics,  etc. 

66.  If  any  person  is,  by  reason  of  infancy,  lunacy  or  other 
inability,  incapable  of  making  any  affidavit  or  doing  anything 
required  or  permitted  by  this  Ordinance  or  by  any  rules  made 
under  the  authority  of  this  Ordinance,  then  the  guardian  of  such 
incapable  person,  or  if  there  be  none,  any  person  appointed  by 
any  Court  possessing  jurisdiction  in  respect  of  the  property  of 
incapable  persons,  upon  the  petition  of  any  person  on  behalf 
of  such  incapable  person  or  any  other  person  interested  in  the 
making  of  such  affidavit  or  doing  such  thing,  may  make  such 
affidavit,  or  an  affidavit  as  nearly  corresponding  thereto  as  cir- 
cumstances may  permit,  and  do  such  thing  in  the  name  and  on 
behalf  of  such  incapable  person,  and  all  acts  done  by  such  sub- 
stitute shall,  for  the  purposes  of  this  Ordinance,  be  as  effectual 
as  if  done  by  the  person  for  which  he  is  substituted. 

Definition  of  "trade  mark."  No.  7  of  1889 

67.  The  definition  of  trade  mark  in  the  Merchandise  Marks 
Ordinance,  1889*  is  hereby  repealed,  and  the  expression  "trade 
mark"  in  that  Ordinance  shall  have  the  same  meaning  as  in  this 
Ordinance. 

*Substantially  the  same  as  Merchandise  Mark  Act,  1887,  of  Great  Britain,  which 
see. 


SOUTH  AFRICAN  UNION 


Interpretation  of  Terms  Used  in  this  Chapter 

96.  For  the  purposes  of  this  Chapter  — 

"mark"  shall  include  a  device,  brand,  heading,  label,  ticket, 
name,  signature,  word,  letter,  numeral,  or  any  combination 
thereof  ; 

"Provincial  Trade  Marks  Act"  shall  mean  a  law  in  force 
in  any  Province  on  the  31st  day  of  May,  1910,  relating  to  the 
registration  of  trade  marks,  and  shall  include  all  regulations  in 
force  under  such  law  ; 

"register"  shall  mean  the  register  of  trade  marks  kept 
under  this  Chapter  ; 

"registered  trade  mark"  shall  mean  a  trade  mark  regis- 
tered under  this  Chapter  ; 

"trade  mark"  shall  mean  a  mark  used  or  proposed  to  be 
used  upon  or  in  connection  with  goods  for  the  purpose  of  indi- 
cating that  they  are  the  goods  of  the  proprietor  of  that  trade 
mark  by  virtue  of  manufacture,  selection,  certification,  dealing 
with  or  offering  for  sale. 

PART  I  —  TRANSITIONAL  PROVISIONS 
Transfer  of  Administration  of  Provincial  Trade  Marks  Acts 

97.  The  Governor-General  may,  by  proclamation  in  the 
Gazette,  declare  that  on  a  date  therein  specified  the  administra- 
tion of  the  Trade  Marks  Acts  of  any  Province  shall  be  trans- 
ferred to  the  trade  marks  office  established  under  this  Act. 

Effect  of  Such  Transfer 

98.  On  and  after  the  date  so  specified  — 

(1)  The  Trade  Marks  Acts  of  any  such  Province  shall,  save 
as  is  otherwise  expressly  provided,  cease  to  apply; 

(2)  proceedings  under  a  Provincial  Trade  Marks  Act  pend- 
ing at  the  commencement  of  this  Chapter  may  be  continued  and 
completed  under  the  Provincial  Trade  Marks  Act  which  shall, 
so  far  as  is  necessary  for  the  purpose  of  completing  then  pend- 
ing proceedings  and  of  giving  effect  to  then  existing  rights  and 
obligations,  be  administered  by  the  registrar,  who  shall  collect 
any  fees  payable  thereunder; 

*For  extension  and  full  title  see  Sec.  194  (note)  and  Sec.  195. 


SOUTH  AFRICAN  UNION  829 

(3)  all  powers  and  functions  under  any  Provincial  Trade 
Marks  Act  vested  in  the  Governor  or  in  any  Minister,  officer  or 
authority  of  any  such  Province  as  aforesaid  shall  vest  in  the 
Governor-General,  Minister,  officer  or  authority  exercising  simi- 
lar powers  under  the  Union  as  the  case  requires  or  as  is  pre- 
scribed ; 

(4)  all  the  registers  of  trade  marks  existing  under  any  Pro- 
vincial Trade  Marks  Act  shall  be  deemed  to  be  incorporated 
with  and  to  form  part  of  the  register  established  under  this 
Chapter ; 

(5)  subject  to  the  provisions  of  sections  one  hundred  and 
twenty-three,  one  hundred  and  twenty-eight  and  one  hundred 
and  thirty-five  of  this  Act,  the  validity  of  the  original  entry  of 
any  trade  mark  upon  the  registers  so  incorporated  shall  be 
determined  in  accordance  with  the  statutes  in  force  at  the  date 
of  such  entry,  and  such  trade  mark  shall  retain  its  original 
date,  but  for  all  other  purposes  it  shall  be  deemed  to  be  a  trade 
mark  registered  under  this  Chapter. 

PART  II — REGISTBABLE  TRADE  MARKS 
Essential  Particulars  of  Registrable  Trade  Marks 
99.    A  registrable  trade  mark  must  contain  or  consist  of  at 
least  one  of  the  following  essential  particulars: — 

a)  The  name  of  a  company,  individual  or  firm  represented 
in  a  special  or  particular  manner;  or 

b)  the  signature  of  the  applicant  for  registration  or  of 
some  predecessor  in  his  business ;  or 

c)  an  invented  word  or  invented  words;  or 

d)  a  distinctive  word  or  words  not  reasonably  required  for 
use  in  the  trade;  or 

e)  any  other  distinctive  mark; 

but  a  name  or  signature  other  than  such  as  fall  within  the  de- 
scription in  paragraphs  (a)  and  (b)  of  this  section  shall  not, 
except  by  order  of  the  Minister  or  the  court,  be  deemed  a  dis- 
tinctive mark: 

Provided  that  any  mark  used  as  a  trade  mark  in  any 
Province  by  the  applicant  or  his  predecessor  in  business  for  ten 
years  prior  to  the  commencement  of  this  Chapter  and  which 
has  continued  to  be  so  used  (either  in  its  original  form  or  with 
additions  or  alterations  not  substantially  affecting  the  identity 
of  the  same)  down  to  the  date  of  the  application  for  registration 
may  be  registered  as  a  trade  mark  for  any  such  Province. 

For  the  purposes  of  this  section  " distinctive"  shall  mean 
adapted  to  distinguish  the  goods  of  the  proprietor  of  the  trade 
mark  from  those  of  other  persons.  In  determining  whether  a 


830  SOUTH  AFRICAN  UNION 

trade  mark  is  so  adapted  regard  may  be  had  in  respect  to  a 
trade  mark  in  actual  use  to  the  extent  to  which  such  user  has 
rendered  such  trade  mark  in  fact  distinctive  for  the  goods  with 
respect  to  which  it  is  registered  or  proposed  to  be  registered. 
What  a  Registrable  Trade  Mark  May  Not  Contain 

100.  Except  in  the  case  of  a  trade  mark  properly  regis- 
tered under  a  Provincial  Trade  Marks  Act,  the  registrar  may 
refuse  to  register  a  trade  mark  which  contains — 

a)  a  representation  of  the  King,  the  Queen,  or  any  mem- 
ber of  the  Royal  Family,  or  of  the  Royal  Crown ;  or 

b)  the  word  "Royal"  or  any  word,  letter  or  device  indicat- 
ing Royal  or  Government  patronage ;  or 

c)  a  representation  of  the  Royal  Arms,  or  of  a  national 
flag  of  the  United  Kingdom,  or  of  the  national  arms  of  the 
United  Kingdom,  or  of  the  arms  or  seal  of  the  Union ;  or 

d)  a  representation  of  any  living  person  without  his  writ- 
ten consent. 

Limitation  of  Trade  Mark  as  to  Particular  Colours 

101.  A  trade  mark  may  be  limited  in  whole  or  in  part  to 
a  particular  colour  or  colours,  and  in  case  of  any  application 
for  the  registration  of  a  trade  mark,  the  fact  that  the  trade 
mark  is  so  limited  shall  be  taken  into  consideration  by  any 
tribunal  in  deciding  whether  it  is  distinctive  or  not.    If  and  so 
far  as  a  trade  mark  is  registered  without  limitation  of  colour 
it  shall  be  deemed  to  be  registered  for  all  colours. 

Registration  of  Mark  in  Favour  of  Authorities  Undertaking 
Examination  of  Goods 

102.  (1)  Where  any  Union  or  Provincial  authority,  or  any 
association  or  person  undertakes  the  examination  of  any  goods 
in  respect  of  origin,  material,  mode  or  conditions  of  manufac- 
ture, quality,  accuracy,  or  other  characteristic,  and  certifies  the 
result  of  such  examination  by  a  mark  used  upon  or  in  connec- 
tion with  such  goods,  the  Minister  may,  if  he  judges  it  to  be  to 
the  public  advantage,  permit  the  authority,  association  or  per- 
son to  register  the  mark  as  a  trade  mark  in  respect  of  such 
goods,  whether  the  authority,  association  or  person  is  or  is  not 
a  trader,  or  is  or  is  not  possessed  of  a  goodwill  in  connection 
with  such  examination  and  certifying. 

(2)  When  registered,  the  trade  mark  shall  be  deemed  in 
all  respects  to  be  a  registered  trade  mark,  and  the  authority, 
association  or  person  to  be  the  registered  proprietor  thereof, 
save  that  the  trade  mark  shall  not  be  transmissible  or  assignable 
except  with  the  permission  of  the  Minister. 

(3)  This  section  shall  as  to  conditions  of  manufacture  ap- 


SOUTH  AFRICAN  UNION  831 

ply  to  Union  and  Provincial  authorities  only. 

PART  III — REGISTRATION  OP  TRADE  MARKS 

Trade  Marks  Must  be  Registered  in  Respect  of  Particular 

Goods  or  Classes  of  Goods 

103.  A  trade  mark  must  be  registered  in  respect  of  par- 
ticular goods  or  classes  of  goods  as  prescribed. 

Grounds  for  Requiring  Disclaimer  as  to  Particular  Parts  or 
Matter  as  a  Condition  of  Registration 

104.  If  a  trade  mark — 

a)  contains  parts  not  separately  registered  by  the  proprie- 
tor as  trade  marks;  or 

b)  contains  matter  common  to  the  trade  or  otherwise  of  a 
non-distinctive  character, 

the  registrar  or  the  court,  as  the  case  may  be,  in  deciding 
whether  the  trade  mark  shall  be  entered  or  shall  remain  upon 
the  register,  may  in  his  or  its  discretion  require,  as  a  condition 
of  its  being  on  the  register  that  the  proprietor  shall  disclaim 
any  right  to  the  exclusive  use  of  any  of  those  parts,  or  of  that 
matter,  to  the  exclusive  use  of  which  they  hold  him  not  to  be 
entitled,  or  that  he  shall  make  such  other  disclaimer  as  they 
think  needful  for  the  purpose  of  defining  his  rights  under  the 
registration:  Provided  that  no  such  disclaimer  shall  affect  any 
rights  of  the  proprietor  of  the  trade  mark  except  such  as  de- 
pend upon  its  registration. 

Trade  Marks  Identical  with  Registered  Trade  Marks  of  Another 
Not  to  be  Registered 

105.  Except  by  order  of  the  court,  or,  in  the  case  of  a 
trade  mark  falling  within  the  proviso  to  section  ninety-nine,  no 
trade  mark  shall,  save  as  is  provided  by  section  one  hundred 
and  eleven,  be  registered  in  respect  of  any  goods  or  description 
of  goods  if  such  trade  mark  is  identical  with  one  belonging  to 
a  different  proprietor  and  already  registered  in  respect  of  such 
goods  or  description  of  goods,  or  if  such  trade  mark  so  nearly 
resembles  the  other  trade  mark  as  to  be  calculated  to  deceive. 
Refusal  Where  Several  Applicants  for  Registration  of  Identical 

Trade  Mark 

106.  Where  each  of  several  persons  applies  to  be  regis- 
tered as  the  proprietor  of  the  same  trade  mark  or  of  nearly 
identical  trade  marks  in  respect  of  the  same  goods  or  descrip- 
tion of  goods,  the  registrar  may  refuse  to  register  the  trade 
mark  until  the  rights  of  the  applicants  have  been  determined 
by  the  court,  or  have  been  settled  by  agreement  in  a  manner 
approved  by  him. 


832  SOUTH  AFRICAN  UNION 

Circumstances  Under  Which  Registration  of  Identical  Trade 
Marks  May  Take  Place 

107.  In  case  of  honest  concurrent  user  or  of  special  cir- 
cumstances the  court  may,  in  its  discretion,  permit  the  regis- 
tration of  the  same  trade  mark  or  of  nearly  identical  trade 
marks  for  the  same  goods  or  description  of  goods  by  more  than 
one  proprietor,  subject  to  such  conditions  and  limitations  (if 
any)  as  to  mode  or  place  of  user  or  otherwise  as  it  may  think 
fit  to  impose. 

Registration  of  Associated  Trade  Marks 

108.  (1)  Where  application  is  made  for  the  registration 
of  a  trade  mark  so  nearly  resembling  a  trade  mark  of  the  appli- 
cant which  is  already  on  the  register  as  to  be  calculated  to  de- 
ceive or  cause  confusion  if  used  by  a  person  other  than  the 
applicant,  the  registrar  may  require  as  a  condition  of  registra- 
tion that  the  trade  marks  shall  be  entered  on  the  register  as 
associated  trade  marks. 

(2)  If  the  proprietor  of  a  trade  mark  claims  to  be  entitled 
to  the  exclusive  use  of  any  part  of  it  separately  he  may,  if  the 
part  satisfies  all  the  conditions  of  a  trade  mark,  register  it  as 
a  separate  trade  mark. 

(3)  When  a  part  of  a  registered  trade  mark  is  registered 
separately,  it  and  the  trade  mark  of  which  it  forms  a  part  shall 
be  deemed  to  be  associated  trade  marks,  and  shall  be  entered 
on  the  register  as  such,  and  the  user  of  the  whole  trade  mark 
shall  for  the  purposes  of  this  Chapter  be  deemed  to  be  also  a 
user  of  the  part  separately  registered  as  a  trade  mark. 

(4)  Associated  trade  marks  shall  be  assignable  or  trans- 
missible only  as  a  whole  and  not  separately;  but  they  shall  for 
all  other  purposes  be  deemed  to  have  been  registered  as  separate 
trade  marks. 

Acceptance  of  User  of  Associated  Trade  Marks  as  Equivalent 
for  User  of  Registered  Trade  Mark 

109.  Where  under  the  provisions  of  this  Chapter  user  of 
a  registered  trade  mark  is  required  to  be  proved  for  any  pur- 
pose, the  registrar,  or  the  court,  as  the  case  may  be,  may,  if  and 
so  far  as  he  or  it  thinks  fit,  accept  user  of  an  associated  trade 
mark,  or  of  the  trade  mark  with  additions  or  alterations  not 
substantially  affecting  its  identity,  as  an  equivalent  for  the  user 
of  the  first-mentioned  trade  mark. 

Form  of  Application  for  Registration  of  Trade  Mark 

110.  (1)  Any  person  claiming  to  be  the  proprietor  of  a 
trade  mark  may  make  application  to  the  registrar  for  the  regis- 
tration of  his  trade  mark. 


SOUTH  AFRICAN  UNION  833 

(2)  The  application  must  be  made  in  the  form  prescribed, 
and  be  accompanied  by  the  prescribed  number  of  representa- 
tions of  the  trade  mark,  and  must — ; 

a)  specify  the  goods  or  class  of  goods  in  respect  of  which 
the  applicant  desires  the  trade  mark  to  be  registered ;  and 

b)  state  an  address  within  the  Union  as  an  address  for 
service. 

(3)  Separate  applications  must  be  made  for  the  registra- 
tion of  a  trade  mark  in  respect  of  each  class  of  goods  in  respect 
of  which  the  applicant  desires  it  to  be  registered. 

Procedure  on  Application  for  Registration  of  Trade  Mark 

111.     (1)  Every  application  must  be  lodged  by  being  left 
at  or  sent  by  post  to  the  trade  marks  office. 

(2)  Where  the  same  trade  mark,  or  a  nearly  identical  trade 
mark,  is  owned  or  registered   by    another  proprietor  in  any 
Province  of  the  Union  in  respect  of  the  same  goods,  or  descrip- 
tion of  goods,  the  trade  mark  may  be  registered,  but  any  such 
Province  may  be  excepted  from  the  registration. 

(3)  Where  the  trade  mark,  or  a  nearly  identical  trade  mark, 
is  common  to  the  trade  in  another  Province,  the  registration 
under  this  Chapter  shall  confer   no    exclusive  rights  in  that 
Province  on  the  registered  proprietor,  and  that  Province  may 
be  excepted  from  the  registration  under  this  Chapter. 

(4)  Subject  to  the  provisions  of  this  Chapter,  the  registrar 
may  either  accept  the  application,  with  or  without  modification 
or  conditions,  or  refuse  it. 

Appeal  to  Court  Against  Refusal  or  Conditional  Acceptance  by 

Registrar  of  Application 

112.  (1)  In  case  of  any  such  refusal  or  conditional  ac- 
ceptance, the  registrar  shall,  if  required  by  the  applicant,  state 
in  writing  the  grounds  of  his  decision,  and  the  materials  used 
by  him  in  arriving  at  the  same,  and  such  decision  shall  be  sub- 
ject to  appeal  to  the  court. 

(2)  The  court  shall  hear  the  applicant,  and,  if  required, 
also  the  registrar,  and  shall  make  an  order  determining  whether, 
and  subject  to  what  conditions,  amendments  or  modifications, 
if  any,  the  application  is  to  be  accepted. 

(3)  Appeals  under  this  section  shall  be  heard  on  the  ma- 
terials so  stated  by  the  registrar  to  have  been  used  by  him  in 
arriving  at  his  decision ;  and  no  further  grounds  of  objection  to 
the  acceptance  of  the  application  shall  be  taken  by  the  registrar, 
other  than  those  stated  by  him,  except  by  leave  of  the  court. 
When  any  further  grounds  of  objection  are  taken,  the  applicant 
shall  be  entitled  to  withdraw  his  application  without  payment 
of  costs  on  giving  notice  as  prescribed. 


834  SOUTH  AFRICAN  UNION 

(4)  The  registrar  or  the  court,  as  the  case  may  be,  may  at 
any  time,  whether  before  or  after  acceptance,  correct  any  error 
in  or  in  connection  with  the  application,  or  may  permit  the  ap- 
plicant to  amend  his  application  upon  such  terms  as  they  may 
think  fit. 

Advertisement  of  Accepted  Applications 

113.  If  the  application  is  accepted  with  or  without  condi- 
tions or  modifications,  it  shall  forthwith  be  advertised  in  the 
prescribed  manner. 

Non-Completed  Applications 

114.  If,  by  reason  of  default  on  the  part  of  the  applicant, 
the  registration  of  a  trade  mark  has  not  been  completed  within 
twelve  months  from  the  date  of  lodging  of  the  application,  the 
registrar  shall  give  notice  of  the  non-completion  to  the  appli- 
cant, and  if,  at  the  expiration  of  fourteen  days  from  that  notice 
or  of  such  further  time  as  the  registrar  may  allow,  the  registra- 
tion is  not  completed,  the  application  shall  be  deemed  to  be 
abandoned. 

Notice  of  Opposition  to  Registration 

115.  (1)  Any  person  (hereinafter  referred  to  as  an  ob- 
jector) may,  within  two  months  after  the  date  of  the  last  adver- 
tisement of  the  application  or  within  such  further  time  as  the 
registrar  may  allow,  lodge  at  the  trade  marks  office  a  notice  of 
opposition  in  duplicate  to  the  registration  of  the  trade  mark, 
setting  out  the  grounds  on  which  he  relies  to  support  his  notice. 

(2)  The  registrar  shall  send  a  duplicate  of  the  notice  of 
opposition  to  the  applicant. 

(3)  Every  notice  of  opposition  shall  state  an  address  in 
the  Union  as  an  address  for  service. 

Lodging  of  Counter-Statement  by  Applicant 

116.  (1)  Within  one  month  after  the  lodging  of  notice  of 
opposition  or  within  such  further  time  not  exceeding  three 
months,  as  the  registrar  (on  application  made  within  such  first 
mentioned  one  month)  allows,  the  applicant  may  lodge  at  the 
trade  marks  office  a  counter-statement  in  duplicate,  setting  out 
the  grounds  on  which  he  relies  to  support  his  application. 

(2)  The  registrar  shall  send  a  duplicate  of  the  counter- 
statement  to  the  objector. 

(3)  If  the  applicant  fails  so  to  lodge  a  counter-statement 
he  shall  be  deemed  to  have  abandoned  his  application. 

(4)  The  registrar  may  order  that  the  cost  of  any  proceed- 
ing under  this  section  shall  be  paid  by  either  party  and  his 
order  shall  be  enforceable  in  all  respects  as  if  it  were  an  order 
of  a  judge  of  the  court. 


SOUTH  AFRICAN  UNION  835 

Hearing  of  Opposed  Applications 

117.  (1)  The  registrar  shall  fix  a  day  for  the  hearing  of 
the  application,  and  shall  give  notice  thereof  to  the  applicant 
and  the  objector. 

(2)  On  the  day  so  fixed,  or  on  any  other  day  to  which  the 
hearing  is  adjourned,  the  registrar  shall  hear  the  applicant  and 
the  objector  and  their  respective  witnesses,  if  any,  and  shall 
decide  whether  the  application  is  to  be  refused  or  whether  it  is 
to  be  granted  either  with  or  without  modifications  or  conditions. 

Appeal  Against  Registrar's  Decision 

118.  (1)  The  decision  of  the  registrar  shall  be  subject  to 
appeal  to  the  court  in  like  manner  and  in  all  respects  as  if  he 
were  a  judge  of  the  court. 

(2)  On  such  appeal  the  court  shall  hear  the  parties  and,  if 
required,  the  registrar,  and  shall  make  an  order  determining 
whether  and  subject  to  what  conditions,  if  any,  the  registration 
is  to  be  permitted. 

(3)  On  the  hearing  of  any  such  appeal  any  party  may, 
either  in  the  manner  prescribed  or  by  special  leave  of  the  court, 
bring  forward  further  material  for  its  consideration. 

(4)  In  proceedings  under  this  section  no  further  grounds 
of  objection  to  the  registration  of  a  trade  mark  shall  be  allowed 
to  be  taken  by  the  objector  or  the  registrar  other  than  those 
stated  by  the  objector  as  hereinbefore  provided,  except  by  leave 
of  the  court.    Where  any  further  grounds  of  objection  are  taken 
the  applicant  shall  be  entitled  to  withdraw  his  application  with- 
out payment  of  the  costs  of  the  objector  on  giving  notice  as 
prescribed. 

(5)  In  any  appeal  under  this  section  the  court  may,  after 
hearing  the  registrar,  permit  the  trade  mark  proposed  to  be 
registered  to  be  modified  in  any  manner  not  substantially  affect- 
ing the  identity  of  such  trade  mark;  but  in  such  case  the  trade 
mark  as  so  modified  shall  be  advertised  in  the  prescribed  man- 
ner before  being  registered. 

Security  for  Costs 

119.  If  a  party  giving  notice  of  opposition  or  of  appeal 
neither  resides  nor  carries  on  business  within  the  Union,  the 
registrar  may  order  him  to  give  security  for  costs,  and  if  the 
order  is  not  duly  complied  with,  may  treat  the  opposition  or 
appeal  as  abandoned. 

Registration  and  Date  Thereof 

120.  When  an  application  for  registration  has  been  ac- 
cepted and  has  not  been  opposed,  and  the  time  for  notice  of 
opposition  has  expired,  or    has    been  opposed  and  has  been 


836  SOUTH  AFRICAN  UNION 

granted,  the  registrar  shall,  unless  otherwise  directed  by  the 
law  officer,  register  the  trade  mark  as  on  the  date  of  the  lodging 
of  the  application,  and  such  date  shall  be  deemed  to  be  the  date 
of  the  registration,  and  shall  issue  to  the  applicant  a  certificate 
of  the  registration  of  the  trade  mark  in  the  prescribed  form. 

Duration  of  Registration  of  Trade  Mark 
121.    The  registration  of  a  trade  mark  effected  upon  an 
application  made  under  this  Chapter  shall  be  for  a  period  of 
fourteen  years,  but  may  be  renewed  from  time  to  time  in  ac- 
cordance with  the  provisions  of  this  Chapter. 

Assignment  of  Registered  Trade  Mark 
122.    Subject  to  the  provisions  of  this  Chapter,  the  per- 
son for  the  time  being  entered  in  the  register  as  proprietor  of 
a  trade  mark  shall  have  power  to  assign  the  trade  mark. 
Registration  Prima  Facie  Evidence  of  Right  to  Exclusive  Use 

123.  (1)  The  registration  of  a  person  as  proprietor  of  a 
trade  mark  shall  be  prima  facie  evidence  of  his  right  to  the 
exclusive  use  of  the  trade  mark  upon  the  goods  in  respect  to 
which  it  is  registered  and  the  validity  of  the  registration. 

(2)  The  registration  of  a  person  as  proprietor  of  a  trade 
mark  shall,  after  the  expiration  of  seven  years  from  the  date 
of  the  registration,  (in  the  absence  of  fraud),  be  conclusive  evi- 
dence of  the  validity  of  the  registration  and  subject  to  this 
Chapter  of  his  right  to  the  exclusive  use  of  the  trade  mark  in 
respect  to  the  goods  in  regard  to  which  it  is  registered,  unless 
the  trade  mark  offends  against  the  provisions  of  section  one 
hundred  and  forty. 

This  sub-section  shall  not  apply  to  a  trade  mark  registered 
before  the  commencement  of  this  Chapter,  under  a  Provincial 
Trade  Marks  Act. 

(3)  Nothing  in  this  Chapter  contained  shall  entitle  the  pro- 
prietor of  a  registered  trade  mark  to  interfere  with  or  restrain 
the  user  by  any  person  of  a  similar  trade  mark  upon  or  in  con- 
nection with  goods  upon  or  in  connection  with  which  such  per- 
son has,  by  himself  or  his  predecessors  in  business,  continuously 
used  such  trade  mark  from  a  date  anterior  to  the  user  of  the 
first-mentioned  trade  mark  by  the  proprietor  thereof  or  his 
predecessors  in  business,  or    to    object   (on    such  user  being 
proved)  to  such  person  being  put  upon  the  register  for  such 
similar  trade  mark  in  respect  of  such  goods  under  the  provi- 
sions of  section  one  hundred  and  seven. 

Registration  a  Condition  Precedent  to  Action  for  Infringement 

or  Damages 

124.  No  person  shall  be  entitled  to  institute  any  proceed- 


SOUTH  AFRICAN  UNION  837 

ing  to  prevent,  or  recover  damages  for,  the  infringement  of  a 
trade  mark,  unless  in  the  case  of  a  registrable  trade  mark  it  is 
registered  under  this  Chapter  or  under  a  Provincial  Trade 
Marks  Act. 

What  Constitutes  Infringement  of  Rights  Acquired 
by  Registration 

125.  The  rights  acquired  by  registration  of  a  trade  mark 
shall  be  deemed  to  be  infringed  by  the  use,  in  respect  of  the 
goods  in  respect  of  which  it  is  registered,  of  a  mark  substan- 
tially identical  with  the  trade  mark  or  so  nearly  resembling  it 
as  to  be  likely  to  deceive. 

In  an  action  for  the  infringement  of  a  trade  mark  the  court, 
in  trying  the  question  of  infringement,  shall  admit  evidence  of 
the  usages  of  the  trade  in  respect  to  the  get-up  of  those  goods 
and  of  any  trade  marks  or  get-up  legitimately  used  in  respect 
of  them  by  other  persons. 

Registration  Not  to  Interfere  With  Use  by  Any  Person  of  His 
Own  Name  or  Place  of  Business 

126.  No  registration  under  this  Chapter  shall  interfere 
with  any  bona  fide  use  by  a  person  of  his  own  name  or  place  of 
business,  or  that  of  any  of  his  predecessors  in  business  or  in 
the  use  by  any  person  of  any  bona  fide  description  of  the  char- 
acter or  quality  of  his  goods. 

Rights  of  Action  for  Passing  Off  Goods  not  Affected 

127.  Nothing  in  this  Chapter  contained  shall  be  deemed  to 
affect  rights  of  action  against  any  person  for  passing  off  goods 
as  those  of  another  person  or  the  remedies  in  respect  thereof. 

Renewal  of  Registration  and  Duration  of  Renewal 

128.  The  registrar  shall,  on  application  made  in  the  pre- 
scribed manner  and  within  the  prescribed  period  by  the  regis- 
tered proprietor  of  a  trade  mark  registered  or  deemed  to  be 
registered  under  this  Chapter,  renew  the  registration  of  such 
trade  mark  for  a  period  of  fourteen  years  from  the  expiration 
of  the  original  registration  or  of  the  last  renewal  of  registration, 
as  the  case  may  be,  which  date  is  in  this  Part  of  this  Chapter 
termed  "the  expiration  of  the  last  registration":  Provided  that 
in  the  case  of  a  trade  mark  registered  in  the  Transvaal  before 
the  commencement  of  this  Chapter  the  expiration  of  the  last 
registration  shall  be  fourteen  years  after  such  commencement. 

Removal  of  Trade  Mark  from  Register  if  Conditions  as  to  User 
or  Renewal  Not  Complied  With 

129.  (1)  At  the  prescribed  time  before  the  expiration  of 
the  last  registration  of  a  trade  mark  under  this  Chapter,  the 
registrar  shall  send  notice  in  the  prescribed  manner  to  the  reg- 


838  SOUTH  AFRICAN  UNION 

istered  proprietor  at  his  address  for  service  in  the  Union  of  the 
date  at  which  the  existing  registration  will  expire  and  the  con- 
ditions as  to  proof  of  substantial  user  and  as  to  payment  of  fees 
and  otherwise,  upon  which  a  renewal  of  such  registration  may 
be  obtained,  and  if  at  the  expiration  of  the  time  prescribed  in 
that  behalf  those  conditions  have  not  been  duly  complied  with, 
the  registrar  may  remove  such  trade  mark  from  the  register, 
subject  to  such  conditions  (if  any)  as  to  its  restoration  as  may 
be  prescribed. 

(2)  Where  a  trade  mark  has  been  removed  from  the  regis- 
ter for  non-payment  of  the  fee  for  renewal,  it  shall,  nevertheless, 
for  the  purpose  of  any  application  for  registration  during  one 
year  next  after  the  date  of  the  removal,  be  deemed  to  be  a  trade 
mark  which  is  already  registered,  unless  it  is  shown  to  the  satis- 
faction of  the  registrar  that  there  has  been  no  bona  fide  trade 
user  of  such  trade  mark  during  the  two  years  immediately  pre- 
ceding such  removal. 

PABT  IV. — ASSIGNMENT  OF  REGISTERED  TRADE  MARKS 
Assignment  Only  in  Connection  with  Goodwill 

130.  A  trade  mark  when  registered  may  be  assigned  and 
transmitted  only  in  connection  with  the  goodwill  of  the  business 
concerned  in  the  goods  for  which  it  has  been  registered,  and 
shall  be  determinable  with  that  goodwill. 

Apportionment  in  Case  of  Dissolution  of  Partnership,  Etc. 

131.  '(1)  In  anY  case  where  by  reason  of  dissolution  of 
partnership  or  other  cause  a  person  ceases  to  carry  on  business, 
and  the  goodwill  of  the  person  does  not  pass  to  one  successor 
but  is  divided,  the  registrar  may  (subject  to  the  provisions  of 
this  Chapter  as  to  associated  trade  marks)  on  the  application  of 
the  parties  interested,  permit  an  apportionment  of  the  regis- 
tered trade  marks  of  the  person  among  the  persons  in  fact  con- 
tinuing the  business,  subject  to  such  conditions  and  modifica- 
tions (if  any)  as  he  may  think  necessary  in  the  public  interest. 

(2)  Any  decision  of  the  registrar  under  this  section  shall  be 
subject  to  appeal  to  the  court. 

PART  V. — REGISTER  OP  TRADE  MARKS 
Particulars  to  be  Entered  in  Register 

132.  (1)  There  shall  be  kept  at  the  trade  marks  office  a 
register  of  trade  marks  wherein  shall  be  entered  particulars — 

(a)  all  registered  trade  marks,  with  the  name  and  addresses 
of  their  proprietors,  together  with  the  date  of  registration  and 
expiry  thereof; 

(b)  notification  of  assignments  and  transmissions,  and  dis- 
claimers; and 


SOUTH  AFRICAN  UNION  839 

(c)  any  other  matters  relating  to  registered  trade  marks 
which  are  prescribed. 

(2)  Where  a  trade  mark  has  been  lawfully  assigned  or 
transmitted,  a  notification  of  the  assignment  or  transmission, 
in  the  form  prescribed,  may  be  given  to  the  registrar,  who  shall 
thereupon  register  the  assignment  or  transmission. 
Amendment  of  Register 

133.  (1)  The  registrar  may,  on  request  made  in  the  pre- 
scribed manner  by  the  registered  proprietor  of  a  trade  mark  or 
by  some  person  entitled  by  law  to  act  in  his  name,  amend  or  alter 
the  register  by — 

(a)  correcting  any  error  in  the  name  or  address  of  the  reg- 
istered proprietor  of  the  trade  mark;  or 

(b)  altering  the  name  or  address  of  the  registered  proprie- 
tor who  has  changed  his  name  or  address ;  or 

(c)  cancelling  the  registration  of  the  trade  mark;  or 

(d)  striking  out  any  goods  or  classes  of  goods  from  those 
in  respect  of  which  the  trade  mark  is  registered ;  or 

(e)  entering  a  disclaimer  or  memorandum  relating  to  the 
trade  mark  which  does  not  in  any  way  extend  the  rights  given 
by  the  registration  of  the  trade  mark. 

(2)  Where  the  register  has  been  amended  or  altered  under 
this  section  the  registrar  may — 

(a)  cancel  the  certificate  of  registration  of  the  trade  mark 
and  issue  a  new  certificate  of  registration;  or 

(b)  make  such  amendments  or  alterations  in  the  certificate 
of  registration  of  the  trade  mark  as  are  rendered  necessary  by 
the  amendment  or  alteration  of  the  register. 

(3)  Any  decision  of  the  registrar  under  this  section  shall 
be  subject  to  appeal  to  the  court. 

Addition  to  an  Alteration  of  Registered  Trade  Mark  with  the 

Leave  of  Registrar 

134.  The  registered  proprietor  of  a  trade  mark  may  in  the 
prescribed  manner  apply  to  the  registrar  for  leave  to  add  to  or 
alter  the  trade  mark  in  any  manner  not  substantially  affecting 
its  identity,  and  the  registrar  may  refuse  or  grant  the  leave  on 
such  terms  as  he  thinks  fit,  but  his  refusal  or  the  terms  on  which 
he  grants  the  leave  shall  be  subject  to  appeal  to  the  court.    If 
leave  be  granted,  the  registrar  shall  cause  the  register  to  be 
altered  and  shall  in  the  prescribed  manner  advertise  the  trade 
mark  as  altered. 

Rectification  to  Register  by  Order  of  the  Court 

135.  (1)   Subject  to  the  provisions  of  this  Chapter  the 
court,  on  the  application  of  any  person  aggrieved  or  of  the  reg- 


840  SOUTH  AFRICAN  UNION 

istrar,  may  order  the  rectification  of  the  register,  by — 

(a)  the  making  of  an  entry  wrongly  omitted  to  be  made  in 
the  register;  or 

(b)  the  expunging  of  any  entry  wrongly  made  in  or  remain- 
ing on  the  register;  or 

(c)  the  insertion  in  the  register  of  any  exception  or  limita- 
tion affecting  the  registration  of  a  trade  mark  which  in  the 
opinion  of  the  court  ought  to  be  inserted;  or 

(d)  the  correction  of  any  error  or  defect  in  the  register. 

(2)  The  registrar  shall  only  make  the  application  to  the 
court  under  this  section  in  cases  where  he  thinks  the  application 
necessary  or  desirable  in  the  public  interest. 

(3)  The  court  may,  in  any  proceeding  under  this  section, 
decide  any  question  that  it  may  be  necessary  or  expedient  to 
decide  in  connection  with  the  rectification  of  the  register. 

(4)  No  trade  mark  which  is  upon  any  register  of  trade 
marks  at  the  commencement  of  this  Chapter  and  which  under 
this  Chapter  is  a  registrable  trade  mark  shall  be  removed  from 
the  register  on  the  ground  that  it  was  not  registrable  under  the 
Acts  in  force  at  the  date  of  its  registration.    But  nothing  in 
this  section  contained  shall  subject  any  person  to  any  liability 
in  respect  of  any  act  or  thing  done  before  the  commencement 
of  this  Chapter  to  which  he  would  not  have  been  subject  under 
the  Acts  then  in  force. 

Removal  of  Trade  Mark  from  Register  by  Order  of  Court 

136.  A  registered  trade  mark  may,  on  application  to  the 
court  of  any  person  aggrieved,  be  taken  off  the  register  in 
respect  of  any  of  the  goods  for  which  it  is  registered,  on  the 
ground  that  it  was  registered  by  the  proprietor  or  a  predecessor 
in  title  without  any  bona  fide  intention  to  use  the  same  in  con- 
nection with  such  goods,  and  there  has  in  fact  been  no  bona  fide 
user  of  the  same  in  connection  therewith,  or  on  the  ground  that 
there  has  been  no  bona  fide  user  of  such  trade  mark  in  connec- 
tion with  such  goods  during  the  five  years  immediately  preced- 
ing the  application,  unless  in  either  case  such  non-user  is  shown 
to  be  due  to  special  circumstances  in  the  trade,  and  not  to  any 
intention  not  to  use  or  to  abandon  such  trade  mark  in  respect 
of  such  goods. 

PART  VI. — MISCELLANEOUS  PROVISIONS 
General  Jurisdiction  of  the  Court 

137.  In  addition  to  any  other  powers  conferred  upon  it  by 
this  Act,  the  court  may  in  relation  to  any  appeal  or  application 
under  this  Chapter — 

(a)  refuse  to  make  any  order; 


SOUTH  AFRICAN  UNION  841 

(b)  order  any  issue  of  fact  to  be  tried  in  such  manner  as 
it  directs; 

(c)  order  any  party  to  deliver  to  the  court  or  to  the  regis- 
trar the  certificate  of  registration  of  any  trade  mark ;  and 

(d)  order  any  party  to  pay  costs  to  any  other  party. 
Certification  by  the  Court  as  to  Right  to  the  Exclusive  Use 

of  Trade  Mark 

138.  In  any  legal  proceeding  in  which  the  validity  of  the 
registration  of  a  registered  trade  mark  comes  into  question,  the 
court  may  certify  that  the  right  to  the  exclusive  use  of  the  trade 
mark  came  into  question,  and  was  decided  in  favour  of  the 
registered  proprietor  of  the  trade  mark,  and  then  in  any  subse- 
quent action  for  infringement  of  the  trade  mark  the  plaintiff  on 
obtaining  a  final  order  or  judgment  in  his  favour  shall  have  his 
full  costs,  charges,  and  expenses  as  between  solicitor  and  client, 
unless  the  court  trying  the  subsequent  action  certifies  that  he 
ought  not  to  have  them. 

Power  of  Registrar  to  Allow  Amendment  of  Application  or 
Notice  of  Opposition 

139.  The  registrar  may  at  any  time  before  registration  of 
a  trade  mark  permit  the  amendment  of  the  application  for  the 
registration  of  the  trade  mark  and  may  at  any  time  permit  the 
amendment  of  any  notice  of  opposition  on  such  terms  as  to  costs 
or  otherwise  as  he  thinks  just. 

Scandalous  Designs,  Etc.,  not  to  be  Registered 

140.  No  scandalous  design,  and  no  mark  the  use  of  which 
would  by  reason  of  its  being  likely  to  deceive  or  otherwise  be 
deemed  disentitled  to  protection  in  a  court  of  justice  or  the  use 
of  which  would  be  contrary  to  law  or  morality,  shall  be  regis- 
tered as  a  trade  mark  or  part  of  a  trade  mark. 


CHAPTER  V 
GENERAL  AND  SUPPLEMENTARY  PROVISIONS 

A. — GENERAL 
Seals  of  Offices 

161.  There  shall  be  seals  of  the  patent  office,  the  designs 
office,  the  trade  marks  office,  and  the  copyright  office,  and  impres- 
sions of  any  such  seal  shall  be  judicially  noted  and  admitted 
in  evidence. 

General  Powers  of  Registrar 

162.  (1)  The  registrar  may,  for  the  purposes  of  this  Act — 
(a)  receive  evidence  and  determine  whether  and  how  far  it 


842  SOUTH  AFRICAN  UNION 

shall  be  given  by  affidavit  or  viva  voce  upon  oath ; 

(b)  summon  witnesses  and  issue  commissions  de  bene  esse; 

(c)  order  discovery  or  inspection,  and  require  the  due  pro- 
duction, of  documents ; 

(d)  award  costs  against  any  party  to  any  proceedings 
before  him. 

(2)  The  registrar  may,  on  request  in  writing  accompanied 
by  the  prescribed  fee,  correct  any  clerical  error  in  any  register 
kept  by  him  under  this  Act  or  in  any  proceedings  before  him. 

(3)  Whenever  by  this  Act  any  time  is  specified  within  which 
any  act  or  thing  is  to  be  done  the  registrar  may,  unless  other- 
wise expressly  provided,  extend  the  time  either  before  or  after 
its  expiration. 

Notice  to  Registrar  of  Application  to  the  Court 

163.  The  prescribed  notice  shall  be  given  to  the  registrar 
by  every  applicant  of  any  application  to  the  court  under  this  Act. 

Taxation  of  Costs  Awarded  by  the  Registrar 

164.  Any  costs  awarded  by  the  registrar  shall  be  taxed 
by  a  taxing  officer  of  the  court  and  payment  thereof  may  be 
enforced  in  the  same  manner  as  if  they  were  costs  allowed  by  a 
judge  of  the  court. 

Duty  of  Registrar  in  Exercising  Discretionary  Power  to  Give 
Opportunity  to  Applicant  of  Being  Heard 

165.  Whenever  any  discretionary  power  is  by  this  Act 
given  to  the  registrar  he  shall  not  exercise  that  power  adversely 
to  an  applicant  without  (if  so  required  by  the  applicant  within 
the  prescribed  time,  if  any)  giving  that  applicant  an  opportunity 
of  being  heard  personally  or  by  his  attorney  or  agent. 

Trusts  not  to  be  Registered 

166.  No  notice  of  any  trust  expressed,  implied,  or  construc- 
tive shall  be  entered  in  any  register  kept  under  this  Act,  or  be 
receivable  by  the  registrar. 

Register  to  be  Prima  Facie  Evidence 

167.  Any  register  kept  under  this  Act  shall  be  prima  facie 
evidence  of  any  matters  directed  or  authorized  by  this  Act  to  be 
inserted  in  that  register. 

Inspection  of  Registers 

168.  The  registers  kept  at  any  office  established  under  this 
Act  shall,  on  payment  of  the  prescribed  fees,  and  subject  to  the 
provisions  of  this  Act,  be  open  at  all  convenient  times  in  office 
hours  to  the  inspection  of  the  public. 

Certified  Copies  of  Entries  in  Registers  to  be  Furnished 

on  Application 

169.  A  certified  copy  of  an  entry  in  any  register  kept  in 


SOUTH  AFRICAN  UNION  843 

any  office  established  under  this  Act  shall,  subject  to  any  special 

provisions  to  the  contrary  contained  in  this  Act,  be  given  to  any 

person  who  applies  for  such  a  copy  and  pays  the  prescribed  fee, 

Certificates  of  Registrar  to  be  Evidence 

170.  (1)  A  certificate  purporting  to  be  under  the  hand  of 
the  registrar  as  to  any  entry,  matter  or  thing  which  he  is  author- 
ized by  this  Act  to  make  or  do  shall  be  prima  facie  evidence  of 
the  entry  having  been  made  and  of  the  contents  thereof  and  of 
the  matter  or  thing  having  been  done  or  left  undone. 

(2)  Printed  or  written  copies  or  extracts  purporting  to  be 
certified  by  the  registrar  and  sealed  with  the  seal  of  any  office 
established  under  this  Act  and  documents  purporting,  when  cer- 
tified, to  be  copies  or  extracts  from  any  register  or  book  or 
document  relating  to  patents,  designs,  trade  marks  or  copyright 
and  kept  in  any  such  office  shall  be  admitted  in  evidence  in  all 
courts  and  proceedings  without  further  proof  or  production  of 
the  originals. 

Payment  of  Prescribed  Fees  to  be  Made  Before  Acts  Done  or 
Documents  Issued  or  Works  Received 

171.  Whenever  under  this  Act  any  prescribed  fee  is  pay- 
able in  respect  of  any  application,  registration,  matter,  docu- 
ment or  work,  the  registrar  may  refuse  to  perform  the  act  or  to 
receive  or  to  issue  the  document  or  to  receive  the  work  (as  the 
case  may  be)  until  the  fee  payable  in  respect  thereof  is  paid. 
Lodging  of  Documents  With  and  Giving  of  Notices  May  be 

Through  the  Post 

172.  Any  application,  notice  or  document  authorized  or 
required  under  this  Act  to  be  lodged,  made  or  given  at  the 
patent  office,  the  designs  office,  the  trade  marks  office,  or  the 
copyright  office  or  to  the  registrar  or  any  other  person,  may  be 
sent  by  letter  through  the  post. 

Address  for  Service  and  Change  of  Such  Address 

173.  (1)  Any  address  for  service  stated  in  any  application 
or  notice  of  opposition  under  this  Act  shall,  for  all  purposes  of 
the  application  or  the  notice  of  opposition,  be  deemed  to  be  the 
address  of  the  applicant  or  of  the  opponent  (as  the  case  may  be) 
and  all  documents  in  relation  to  the  application  or  notice  of 
opposition  may  be  served  by  leaving  them  or  sending  them  to 
the  address  for  service  of  the  applicant  or  of  the  opponent  as 
the  case  may  be. 

(2)  Any  address  for  service  may  be  changed  by  notice  to 
the  registrar. 

Persons  Under  Disability 

174.  If  any  person  is,  by  reason  of  minority,  lunacy,  or 


844  SOUTH  AFRICAN  UNION 

other  disability,  incapable  of  making  any  declaration  or  doing 
anything  required  or  permitted  by  this  Act,  then  the  guardian, 
curator  or  other  legal  representative  (if  any)  of  such  person 
or  if  there  be  none,  any  person  appointed  by  the  court  upon 
petition  on  behalf  of  the  person  under  disability  or  on  behalf 
of  any  other  person  interested  in  the  making  of  such  declara- 
tion or  doing  such  thing,  may  make  the  declaration  or  a  declara- 
tion as  nearly  corresponding  thereto  as  circumstances  permit, 
and  do  the  thing  in  the  name  and  on  behalf  of  the  person  under 
disability,  and  all  acts  done  by  such  substitute  shall,  for  the  pur- 
poses of  this  Act,  be  as  effectual,  as  if  done  by  the  person  for 
whom  he  is  substituted. 

Substitution  of  Successor  in  Interest  in  Case  of  Death 
of  Party  to  Proceedings 

175.  If  a  person  who  is  a  party  to  a  proceeding  under  this 
Act  dies  pending  the  proceeding,  the  registrar  or  the  court  (as 
the  case  may  be)  may,  upon  request  made  in  the  prescribed 
manner  and  on  proof  to  his  or  its  satisfaction  of  the  transmis- 
sion of  the  interest  of  the  deceased  person  substitute  in  the  pro- 
ceeding his  successor-in-interest  in  his  place  or  if  the  registrar 
or  the  court  is  of  opinion  that  the  interest  of  the  deceased 
person  is  sufficiently  represented  by  the  surviving  parties,  per- 
mit the  proceeding  to  be  continued  without  such  substitution. 

Evidence  Before  Law  Officer  and  Jurisdiction  of  Law  Officer 
to  Make  Order  as  to  Costs 

176.  Subject  to  any  regulations  prescribed  in  respect  of 
any  proceeding  under  this  Act  before  the  law  officer,  the  evi- 
dence shall  be  given  by  affidavit  in  the  absence  of  directions  to 
the  contrary  but  in  any  case  in  which  he  thinks  it  right  to  do  so 
the  law  officer  may  take  evidence  viva  voce  in  lieu  or  in  addition 
to  evidence  by  affidavit  or  allow  any  declarant  to  be  cross- 
examined  on  his  declaration.    The  law  officer  may  order  costs 
to  be  paid  by  either  party  and  such  order  may  on  the  application 
of  either  party  be  made  an  order  of  the  court. 

Application  to  Law  Officer  for  Directions 

177.  The  registrar  may,  in  case  of  doubt  or  difficulty  aris- 
ing in  the  administration  of  any  provisions  of  this  Act  which 
are  to  be  administered  by  the  registrar,  apply  to  the  law  officer 
for  directions  in  the  matter. 

Agency 

178.  Subject  to  the  provisions  of  this  Act,  the  registrar 
shall  permit  an  agent  to  do  on  behalf  of  the  person  for  whom 
lie  is  agent  any  act  in  connection  with  registration  under  this 
act  or  any  procedure  relating  thereto. 


SOUTH  AFRICAN  UNION  845 

B. — OFFENCES  AND  PENALTIES 

Penalties  for  Making  False  Entries  in  Registers,  Etc.,  for 
Producing  or  Tendering  False  Entries 

179.  Any  person  who — 

a)  makes  or  causes  to  be  made  a  false  entry  in  any  regis- 
ter kept  under  this  Act;  or 

b)  makes  or  causes  to  be  made  a  writing  falsely  purport- 
ing to  be  a  copy  of  an  entry  in  any  such  register ;  or 

c)  produces  or  tenders  or  causes  to  be  produced  or  ten- 
dered as  evidence  any  such  entry  or  copy  thereof, 

knowing  the  same  to  be  false,  shall  be  guilty  of  an  offence  and 
liable  on  conviction  to  imprisonment  without  the  option  of  a 
fine  for  a  period  not  exceeding  three  years. 

Penalty  for  Making  False  Statements  for  the  Purpose  of 
Deceiving  or  Influencing  Registrar  or  Other  Officer 

180.  Any  person  who — 

(a)  for  the  purpose  of  deceiving  the  registrar  or  any  officer 
in  the  execution  of  the  provisions  of  this  Act ;  or 

(b)  for  the  purpose  of  procuring  or  influencing  the  doing 
or  omission  of  anything  in  relation  to  this  Act  or  any  matter 
thereunder, 

makes  a  false  statement  or  representation  knowing  the  same 
to  be  false,  shall  be  guilty  of  an  offence  and  liable  on  conviction 
to  imprisonment  without  the  option  of  a  fine  for  a  period  not 
exceeding  one  year. 

Penalty  for  Practising  as  a  Patent  Agent  Unless 
Registered  as  Such 

182.  Any  person,  not  being  a  registered  patent  agent  or 
an  attorney,  who  practises  or  acts  as  a  patent  agent,  and  any 
person,  not  being  a  registered  patent  agent,  who  describes  him- 
self as  a  patent  agent,  shall  be  guilty  of  an  offence  and  liable 
on  conviction  to  a  fine  not  exceeding  one  hundred  pounds. 

Penalty  for  Use  of  Words  "Patent  Office,"  etc.,  on 
Place  of  Business 

183.  Any  person  who  uses  on  his  place  of  business  or  on 
any  document  issued  by  him  or  otherwise  the  words  "  patent 
office,"  " designs  office,"  or  " trade  marks  office,"  or  " copy- 
right office,"  or  any  other  words  suggesting  that  his  place  of 
business  is  officially  connected  with  or  is  one  of  the  offices  estab- 
lished under  this  Act  shall  be  guilty  of  an  offence  and  liable  on 
conviction  to  a  fine  not  exceeding  twenty-five  pounds. 


846  SOUTH  AFRICAN  UNION 

Penalty  for  Falsely  Describing  as  Registered  a  Design  Which 
is  Unregistered  and  Placed  on  any  Article  Sold  by  Him 

185.  (1)  Any  person  who  falsely  represents  as  being  reg- 
istered a  design  or  trade  mark  which  is  not  registered  and 
which  is  applied  to  any  article  sold  by  him  shall  be  guilty  of  an 
offence  and  liable  on  conviction  to  a  fine  not  exceeding  five 
pounds. 

If  any  person  sells  an  article  on  which  there  is  stamped, 
engraved  or  impressed,  or  to  which  there  is  otherwise  applied 
the  word  "registered'*  or  any  other  word  expressing  or  imply- 
ing that  the  design  or  trade  mark  applied  to  that  article  is 
registered  he  shall  be  deemed  for  the  purposes  of  this  sub- 
section to  represent  that  the  design  or  trade  mark  applied 
thereto  is  a  registered  design  or  trade  mark. 

(2)  Any  person  who  after  a  copyright  in  a  design  has,  in 
accordance  with  Chapter  II,  expired,  puts  or  causes  to  be  put 
on  any  article  to  which  the  design  has  been  applied  the  word 
"registered"  or  any  word  or  words  implying  that  there  is  a 
subsisting  copyright  in  the  design  shall  be  guilty  of  an  offence 
and  liable  on  conviction  to  a  fine  not  exceeding  five  pounds. 

Penalty  for  the  Unauthorised  Use  of  Royal  Arms  or 
Union  Arms 

186.  (1)  The  grant  of  a  patent  or  the  registration  of  a 
design  or  trade  mark  under  this  Act  shall  not  be  deemed  to 
authorize  the  patentee  or  registered  holder  of  the  design  or 
trade  mark  to  use  the  Eoyal  Arms  or  the  Arms  of  the  Union 
on  any  article. 

(2)  Any  person,  who,  without  the  authority  of  the  King 
or  of  some  member  of  the  Royal  Family  or  of  the  Governor- 
General  in  person  (the  burden  of  proof  of  which  authority  shall 
be  upon  the  accused),  assumes  or  uses  in  connection  with  any 
patent,  design  or  trade  mark,  the  Royal  Arms  or  arms  so  nearly 
resembling  the  Royal  Arms  as  to  be  calculated  to  deceive  in  such 
a  manner  as  to  be  likely  to  lead  other  persons  to  believe  that  he 
is  carrying  on  his  trade,  business,  calling  or  profession  by  or 
under  such  authority,  shall  be  guilty  of  an  offence  and  liable  on 
conviction  to  a  fine  not  exceeding  twenty-five  pounds. 

(3)  Any  person  who,  without  the  authority  of  the  Gover- 
nor-General-in-Council  (the  burden  of  proof  of  which  authority 
shall  be  upon  the  accused),  acts  in  connection  with  the  Arms  of 
the  Union  in  manner  described  in  sub-section  (2)  in  relation  to 
the  Royal  Arms  shall  be  guilty  of  an  offence  and  liable  on  con- 
viction to  the  penalty  mentioned  in  that  sub-section. 

Penalties  in  Respect  of  Defaulting  Witnesses 

187.  (1)  Any  person  who,  having  been  duly  summoned  to 


SOUTH  AFRICAN  UNION  847 

appear  as  a  witness  before  the  registrar,  fails  without  lawful 
excuse  and  after  tender  of  reasonable  expenses,  to  appear  in 
obedience  to  the  summons  shall  be  guilty  of  an  offence. 

(2)  Any  person  who,  having  appeared  as  a  witness  before 
the  registrar,  refuses  without  lawful  excuse  to  be  sworn  or  to 
make  affirmation,  or  to  produce  documents,  or  to  answer  ques- 
tions which  he  may  be  lawfully  required  to  answer  shall  be 
guilty  of  an  offence. 

(3)  Any  person  guilty  of  an  offence  mentioned  in  this  sec- 
tion shall  be  liable  on  conviction  to  a  fine  not  exceeding  fifty 
pounds. 

Imprisonment  in  Default  of  Payment  of  Fines 

188.  Whenever  under  this  Act  an  offence  is  punishable  by 
a  fine  the  court  which  imposes  the  fine  may,  without  prejudice 
to  the  provisions  of  any  law  authorizing  the  seizure  and  sale 
of  the  movable  property  of  the  offender  to  pay  the  fine,  sentence 
the  offender  to  imprisonment  for  a  period — 

a)  not  exceeding  seven  days,  if  the  fine  imposed  do  not 
exceed  five  pounds ; 

b)  not  exceeding  fourteen  days  if  the  fine  imposed  do  not 
exceed  ten  pounds ; 

c)  not  exceeding  one  month,  if  the  fine  imposed  do  not 
exceed  twenty-five  pounds; 

d)  not  exceeding  three  months  if  the  fine  imposed  exceed 
fifty  pounds,  unless  the  fine  be  sooner  paid. 

Special  Jurisdiction  of  Magistrate's  Court 

189.  A  magistrate's  court  shall  have  special  jurisdiction 
to  impose  the  maximum  penalties  prescribed  for  an  offence 
against  this  Act  punishable  by  a  fine,  anything  to  the  contrary 
notwithstanding  in  any  law  relating  to  magistrate's  courts. 

C. — SUPPLEMENTAL 

References  in  Certain  Laws  to  Provincial  Laws  to  be  Construed 
as  Being  References  to  Corresponding  Provisions  of  this  Act 

190.  Any  reference  in  any  law  in  force  prior  to  the  31st 
day  of  May,  1910,  to  any  Provincial  Patent  Act,  Provincial  De- 
signs Act,  Provincial  Trade  Marks  Act  or  Provincial  Copyright 
Act  (and  not  being  itself  such  an  Act)  shall  be  construed  as 
being  a  reference  to  the  corresponding  provisions,  so  far  as 
possible,  of  this  Act. 

.»«..«..•. 

Fees  and  Regulations 

192.  (1)  The  Governor-General  may  prescribe  a  tariff  not 
inconsistent  with  this  Act,  of  the  fees  which  shall  be  payable  to 
the  registrar  in  respect  of  any  application,  registration,  matter 


848  SOUTH  AFRICAN  UNION 

or  document  or  work  and  the  fees  shall  be  payable  as  so 
prescribed. 

(2)  The  Governor-General  may  also  make  regulations,  not 
inconsistent  with  this  Act,  as  to  all  matters  which  by  this  Act 
are  required  or  permitted  to  be  prescribed  by  regulation  or 
which  are  necessary  or  convenient  for  giving  effect  to  the  pro- 
visions of  any  Chapter  of  this  Act  or  for  the  conduct  of  any 
business  relating  to  any  office  established  by  this  Act. 

(3)  If  either  House  of  Parliament  resolve  within  thirty 
days  after  any  such  tariff  or  regulation  has  been  laid  on  the 
Table  thereof  in  accordance  with  law  that  any  item  of  the  tariff 
or  that  the  regulation  shall  be  disallowed,  then  such  item  or 
regulation  shall  thereupon  become  of  no  effect,  without  preju- 
dice to  the  validity  of  anything  done  in  the  meanwhile  there- 
under or  to  the  power  to  make  a  new  tariff  or  regulation. 

Interpretation  of  Terms 

193.    In  this  Act,  unless  inconsistent  with  the  context — 

"imprisonment"  shall  mean  imprisonment  with  or  without 
hard  labour  as  the  court  which  passes  sentence  may  direct ; 

"law  officer"  shall  mean  such  law  adviser  of  the  Union 
Government,  as  the  Minister  may  designate  by  notice  in  the 
Gazette,  to  exercise  the  powers  and  to  perform  the  duties  in  any 
one  or  more  Provinces  or  other  areas  of  the  Union,  conferred 
or  imposed  by  this  Act  upon  the  law  officer ; 

"prescribed"  shall  in  relation  to  proceedings  before  the 
court  mean  prescribed  by  rules  of  court  and  in  relation  to  othef 
matters  shall  mean  prescribed  by  or  under  the  authority  of  this 
Act  or  the  regulations ; 

"register"  shall  in  Chapter  V  mean  any  register  kept 
under  this  Act  and  in  any  other  Chapter  of  this  Act  mean  a 
register  kept  in  accordance  with  that  Chapter; 

"registrar"  shall  mean  the  registrar  of  patents,  designs, 
trade  marks  and  copyright  appointed  under  this  Act  and  when 
used  in  Chapters  I,  II,  III  and  IV  shall  be  respectively  the  regis- 
trar of  patents,  the  registrar  of  designs,  the  registrar  of  trade 
marks,  or  the  registrar  of  copyright,  as  the  case  may  be ; 

"regulation"  shall  mean  any  regulation  made  and  in  force 
under  this  Act ; 

"the  court"  shall,  subject  to  the  provisions  of  section 
thirty,  mean  in  respect  of  any  matter  the  provincial  or  local 
division  which  by  law  has  jurisdiction  in  respect  of  that  matter ; 

"this  Act"  shall  include  any  rules  of  court  or  any  regula- 
tions made  thereunder. 

Any  expression  defined  for  the  purposes  of  any  Chapter  of 


SOUTH  AFRICAN  UNION  849 

this  Act  shall  when  used  in  any  other  Chapter,  bear  the  mean- 
ing assigned  to  it  in  the  Chapter  in  which  it  is  defined. 

Repeal  of  Laws 

194.  Subject  to  the  provisions  of  this  Act,  the  laws  men- 
tioned in  the  Fifth  Schedule  to  this  Act  are  hereby  repealed  to 
the  extent  specified  in  the  fourth  column  of  that  Schedule* :  Pro- 
vided that  the  repeal  of  any  such  law  relating  to  a  matter  for 
which  provision  is  made  by  any  particular  Chapter  of  this  Act 
shall  take  effect  at  the  commencement  of  that  Chapter. 

Short  Title 

195.  This  Act  may  be  cited  for  all  purposes  as  the  Patents, 
Designs,  Trade  Marks,  and  Copyright  Act,  1916. 

*Repealing   in   toto    the   respective    legislation   of    the    Provinces    of    Cape   of 
Good  Hope,  Natal,  Transvaal,  and  Orange  Free  State. 


SPAIN 

LAW  OF  MAY  16,  1902  * 
TITLE  I 

GENERAL  DISPOSITIONS 

ARTICLE  1.  Industrial  property  is  the  right  that  is  recog- 
nized by  this  law,  provided  that  the  conditions  that  the  same 
imposes  have  been  fulfilled,  with  respect  ...  to  the  special 
signs  with  which  the  producer  desires  to  distinguish  from  sim- 
ilar objects  the  results  of  his  labor;  ...  to  the  trade  name 
or  to  industrial  recompenses,  and  to  the  right  to  prosecute 
illicit  competition  and  false  indications  of  origin. 

ART.  2.  The  right  of  industrial  property  may  be  acquired 
by  virtue  of: 

A) 

B)  Distinctive  marks  and  signs  of  production  and  of  com- 
merce .    .    . ; 

C)  The  trade  name;  and 

D)  Industrial  recompenses. 

Industrial  ownership  is  applicable,  not  only  to  the  products 
of  industry  properly  so  called,  but  also  to  those  of  agriculture, 
such  as  wines,  oils,  grains,  fruits,  cattle,  etc.,  and  to  mineral 
products  destined  for  commerce,  such  as  mineral  waters  and 
other  materials. 

ART.  3.  Any  Spaniard  or  foreigner,  whether  he  be  an  idi- 
vidual  or  a  legal  person  that  claims  to  establish  or  that  may 
have  established  on  Spanish  territory  a  new  industry,  shall  have 
a  right  to  its  exclusive  exploitation  during  a  certain  number  of 
years,  on  complying  with  the  rules  and  conditions  established 
in  this  law. 

ART.  6.  Spaniards  or  foreigners,  individually  or  as  legal 
persons,  may  solicit  the  registration  of  the  distinctive  marks  or 
signs  with  which  they  intend  to  distinguish  the  production  or 
business  to  which  they  devote  themselves,  as  also  their  .  .  . 
trade  name  and  the  industrial  recompenses  that  they  may  have 
obtained. 

If  the  registration  should  be  conceded,  they  shall  have  the 
right  to  the  protection  of  the  mark,  name,  ...  or  recompense, 

*  Matter  not  relating  to  trade  marks  is  omitted. 


SPAIN  851 

in  the  form  and  under  the  conditions  that  are  determined  in  the 
present  law. 

ART.  7.  The  right  to  which  the  preceding  article  refers  is 
acquired  by  means  of  the  grant  by  the  Government  of  a  certifi- 
cate-title of  the  registration  of  the  mark,  .  .  .  trade  name  or 
industrial  recompense. 

ART.  8.  Every  concession  of  industrial  property  will  be 
granted  without  prejudice  to  the  rights  of  third  parties. 

ART.  9.  Every  concession  of  industrial  property  will  be 
indivisible  as  regards  the  object,  process,  product  or  result 
that  may  have  served  for  its  grant,  without  prejudice  to  the 
transfers  that  by  the  will  of  the  grantee  or  by  virtue  of  law 
may  be  effected  as  to  the  rights  or  profits  guaranteed  by  the  con- 
cession in  question. 

ART.  10.  Concessions  of  industrial  property  are  transfer- 
able by  all  the  methods  that  the  law  recognizes,  but  these  trans- 
fers shall  not  be  effective  with  respect  to  third  parties  until 
they  have  been  entered  in  the  Registry  of  Industrial  Property 
by  means  of  a  public  document.  Said  concessions  are  lost  by 
nullity  or  forfeiture  as  provided  in  the  present  law. 

ART.  11.  There  are  punishable:  Falsification,  usurpation, 
imitation,  illegal  competition  and  false  indication  of  origin. 

TITLE  II 

LEGAL  CONCEPT  OF  INDUSTRIAL  PROPERTY  IN  ITS  DIFFERENT 

MANIFESTATIONS 
•  •••«»•••• 

CHAPTER  II 

SECTION  I 
Marks 

ART.  21.  By  mark  is  understood  any  sign  or  material 
means,  whatever  be  its  class  and  form,  that  serves  to  distinguish 
products  of  industry  and  of  labor,  with  the  object  that  the  public 
may  know  and  distinguish  them,  without  fear  of  confounding 
them  with  others  of  the  same  kind. 

ART.  22.  There  may  especially  constitute  a  mark:  names 
under  a  distinctive  form,  denominations,  labels,  covers,  con- 
tainers or  receptacles,  stamps,  seals,  vignettes,  selvages,  em- 
broidery, filigrees,  engravings,  arms,  emblems,  reliefs,  figures, 
devices,  etc.,  it  being  understood  that  this  enumeration  is  purely 
enunciative  and  not  limitative. 

ART.  23.    The  following  may  make  use  of  a  mark : 


852  SPAIN 

a)  Agriculturists,  in  order  to  distinguish  the  products  of 
the  earth,  of  agricultural  industries,  of  the  live  stock  industry, 
and,  in  general,  of  any  agricultural,  forestry  or  extractive  ex- 
ploitation ; 

b)  Manufacturers,  in  order  to  distinguish  the  products  of 
their  factory; 

c)  Merchants,  in  order  to  distinguish  the  products  that 
they  buy  in  order  to  resell  the  same  under  their  responsibility 
and  guarantee ; 

*••••••••• 

ART.  25.  There  may  also  make  use  of  a  collective  mark: 
syndicates  or  non-mercantile  associations,  to  distinguish  the 
products  of  the  labor  of  all  of  the  individuals  of  the  body; 
municipal  corporations,  to  differentiate  the  products  of  their 
municipal  district;  deputations,  for  those  of  their  respective 
provinces,  and  individuals,  to  distinguish  certain  products  of 
determined  territories  or  regions. 

AKT.  26.  Under  the  name  of  international  marks,  and  until 
otherwise  determined,  are  designated  those  that,  by  virtue  of 
"the  Resolution  of  the  Conference  of  Madrid,"  dated  April  14, 
1891,  by  reason  of  their  having  been  deposited  in  the  Inter- 
national Office  at  Berne,  are  registered  and  protected  in  Spain 
and  in  all  the  nations  adhering  to  the  said  Convention,  except 
in  case  the  Administrations  of  those  countries  may  have  denied 
protection,  making  use  of  the  power  conferred  upon  them  by 
Art.  5  of  the  said  Convention. 

ART.  27.  Marks  that  manufacturers  and  merchants  are 
obliged  to  inscribe  in  a  General  Direction  of  Customs  and  with 
which  they  must  distinguish  the  goods  of  their  manufacture  or 
trade  in  order  that  they  may  circulate  freely  in  the  country, 
shall  be  considered  as  simple  marks  put  on  goods  at  the  custom 
house  for  purposes  of  transit,  or  of  origin  of  manufacture,  and 
as  such  are  not  subject  to  the  prescriptions  of  the  present  law. 

ART.  28.  The  following  may  not  be  adopted  .as  a  mark, 
sign  or  distinctive  of  production: 

a)  National,  provincial  or  municipal  arms  or  coats  of  arms 
and  Spanish  insignia  or  decorations,  unless  authorization  be 
shown  therefor;  in  this  case,  they  cannot  constitute  a  mark  by 
themselves,  being  only  an  accessory  to  the  principal  distinctive. 
The  following  may  concede  authorizations:  The  Ministry  of 
Agriculture,  Industry,  Commerce  and  Public  Works,  respecting 
the  National  arms  and  coats  of  arms;  Provincial  Deputations 
and  Municipal  Corporations,  those  relative  to  their  own,  and 
the  Ministry  of  State,  those  referring  to  the  Spanish  insignia 
or  decorations; 


SPAIN  853 

b)  The  arms,  insignia,  blazonments  or  mottoes  of  States 
or  foreign  nations  without  the  express  consent  of  the  respective 
Governments;  and  in  case  of  obtaining  it,  they  shall  figure  as 
accessory  elements  of  the  principal  mark; 

c)  Denominations  generally  used  in  commerce  to  distin- 
guish goods  and  classes  of  products,  as  well  as  technical  or 
common  names,  adopted  through  current  use  to  distinguish 
them; 

d)  Figures  that  offend  public  morals  and  caricatures  that 
tend  to  ridicule  ideas,  persons,  or  objects  worthy  of  considera- 
tion; 

e)  Distinctives  for  which  others  may  have  obtained  with 
priority  a  certificate  of  registration  for  the  same  class  of  prod- 
ucts, merchandise  or  objects,  while  the  said  right  has  not  be- 
come void  in  accordance  with  this  law; 

f)  All  distinctives  that  through  their  likeness  or  resem- 
blance to  others  already  granted  may  lead  to  confusion  or  error ; 

g)  Those  relating  to  any  religious  cult  whatsoever,  when- 
ever from  the  mark  as  a  whole  it  may  be  deduced  that  it  is 
intended  to  ridicule,  disparage  or  injure  it; 

h)  The  distinctive,  emblem  and  device  of  the  Red  Cross; 
and 

i)  The  portraits  or  names  of  living  persons,  unless  the  cor- 
responding permission  is  obtained  from  them,  and  of  persons 
that  may  have  died,  while  the  relatives  within  the  fourth  civil 
degree  are  opposed  to  the  concession. 

ART.  29.  A  mark  shall  be  made  obligatory  for  chemical 
and  pharmaceutical  products,  and  such  others  as  special  regu- 
lations may  determine. 

SECTION  II 

NATURE  AND  JUDICIAL.  EFFECTS  OF  MARKS 
ART.  30.  The  ownership  of  marks  is  to  be  compared  to 
that  of  movable  goods.  The  modes  of  acquiring  this  ownership 
are  those  recognized  by  the  Civil  Law;  but  in  order  to  be  pro- 
tected by  the  present  law,  it  will  be  indispensable  to  have  ob- 
tained the  corresponding  certificate-title  of  inscription  in  the 
Register  of  Industrial  Property. 

The  certificate-title  to  which  the  preceding  paragraph  refers 
constitutes  a  juris  tantum  presumptive  of  ownership.  The 
ownership  of  a  mark  shall  be  prescriptive  after  three  years  of 
uninterrupted  possession  in  good  faith  and  just  title. 

When  two  or  more  solicit  the  registration  of  the  same  mark, 
.  .  .  the  right  of  priority  shall  belong  to  him  that  shall  have 
first  presented  his  application,  according  to  the  day  and  the 


854  SPAIN 

hour  in  which  it  shall  appear  registered. 

ART.  31.  The  subjects  or  citizens  of  each  one  of  the  States 
that  constitute  the  Union  for  the  Protection  of  Industrial  Prop- 
erty shall  enjoy  equal  rights,  in  accordance  with  the  prescrip- 
tions of  Art.  2  of  the  International  Convention  of  Paris  of 
March  20,  1883. 

Foreigners  whose  States  do  not  form  part  of  the  cited 
Union  shall  have  the  rights  that  are  stipulated  in  treaties,  and 
when  there  are  none,  the  principle  of  reciprocity  shall  be  ob- 
served with  all  rigor. 

ART.  32.  All  those  that,  in  accordance  with  this  law,  ob- 
tain a  certificate  of  ownership  of  a  mark  .  .  .  are  authorized : 

1)  To  prosecute  criminally  before  the  Courts  those  that 
may  use  marks  .    .   .  that  are  falsified  or  imitated  in  such  a 
manner  that  they  may  be  confounded  with  the  true  ones,  or, 
which  although  being  legitimate  for  others,  they  are  not  author- 
ized to  use,  as  well  as  those  that,  without  falsifying  a  mark, 
remove  or  separate  it  from  some  products  in  order  to  apply  it 
to  others; 

2)  To  petition  civilly  before  the  ordinary  Courts  indem- 
nifications for  all  damages  and  losses  that  may  have  been  occa- 
sioned by  all  that  to  which  the  preceding  paragraph  refers; 

3)  To  demand  civilly  equal  indemnification  from  the  mer- 
chant that  suppresses  the  mark  or  sign  of  a  producer  without 
his  express  consent,  although  the  latter  cannot  prevent  him 
from  adding  separately  his  own  mark  or  distinctive  sign  of  his 
business;  and 

4)  To  oppose  the  grant  of  a  certificate  of  ownership  of  a 
mark  .  .  .  when  that  which  is  solicited  is  included  in  the  para- 
graphs marked  with  the  letters  (e),  (f)  and  (i)  of  Art.  28. 

CHAPTER  III 

TRADE  NAME 

ART.  33.  By  trade  name  is  understood  the  name,  firm 
name,  or  designation,  under  which  an  agricultural,  manufactur- 
ing or  mercantile  establishment  is  made  known  to  the  public. 

ART.  34.  The  following  shall  be  considered  as  the  name 
of  an  agricultural,  manufacturing  or  mercantile  establishment: 

a)  The  surnames,  with  or  without  the  Christian  name,  in 
full  or  abbreviated,  of  agriculturists,  of  manufacturers,  or  of 
the  merchants,  that  possess  them; 

b)  Styles  or  signatures  of  firms; 

c)  The  designations  of  mercantile  companies  in  all  their 
forms ; 

d)  Fancy  or  special  designations;  and 


SPAIN  855 

e)  The  designations  of  lands  destined  for  an  agricultural, 
industrial,  or  commercial  enterprise. 

ART.  35.  Independently  of  the  mercantile  registration  of 
which  Art.  16,  of  the  present  Code  of  Commerce  treats,  any 
agriculturist,  industrial,  or  merchant,  Spanish  or  foreign,  domi- 
ciled in  Spain,  may  request,  individually  or  collectively,  the 
inscription  in  the  Register  of  Industrial  Property,  of  his  respec- 
tive trade  name. 

ART.  36.  The  registration  of  a  trade  name  is  effective,  but 
will  only  constitute  this  exclusive  ownership  by  means  of  that 
procedure  that,  from  the  date  of  the  inscription,  will  produce 
legal  effects. 

ART.  37.  When  a  name  or  a  denomination  is  employed  at 
the  same  time  as  a  mark  and  as  a  trade  name,  it  must  be  entered 
separately  in  the  two  Registers,  because  the  first  represents  the 
distinctive  mark  for  the  objects  elaborated  and  offered  to  the 
consumer,  and  the  second  is  only  applied  to  the  samples  or 
showbills,  cases  and  other  accessories,  used  in  order  to  dis- 
tinguish the  establishment. 

ART.  38.     The  registration  of  a  trade  name  will  be  denied : 

a)  When  the  name,  firm  name,  or  denomination,  is  not  dis- 
tinguished sufficiently  from  another  trade  name  already  regis- 
tered ; 

b)  When  without  the  express  consent  of  the  proprietor  of 
a  trade  name  already  registered,  accredited  by  a  legal  docu- 
ment, these  words  are  used:  "formerly  establishment  of ," 

"formerly  factory  of ,"  etc.;  "formerly  manager  of ," 

' '  formerly  chief  of  the  workshop  of , "  "  employe  of , ' ' 

"ex-Director  of ,"  etc.;  "successor  or  successors  of ," 

"branch  office  of ,"  or  "representative  of ,"  or  other 

similar  terms. 

If  for  any  of  these  motives  or  on  account  of  opposition  in 
accordance  with  the  preceding  paragraph,  the  petition  for  regis- 
tration is  not  acceded  to,  the  interested  party  will  be  notified  to 
the  end  that  he  may  modify,  complete  or  withdraw  his  petition. 

ART.  39.  The  possessor  of  a  certificate  of  registration  of 
a  trade  name  is  the  only  one  that  may  add  to  his  name  the  men- 
tion of  "registered"  ("registrado"). 

ART.  40.  Modifications  and  changes  of  a  trade  name  will 
be  the  object  of  a  new  registration. 

ART.  41.  The  possessor  of  a  registered  trade  name  has 
the  same  rights  that  belong  to  the  possessor  of  a  registered 
mark,  which  are  detailed  in  Chapter  2  of  Part  II  of  the  present 
law. 


856  SPAIN 

CHAPTER  IV 

INDUSTRIAL  RECOMPENSES 

ABT.  42.  By  industrial  recompenses  there  shall  be  under- 
stood medals,  mentions,  honorable  distinctions,  or  any  other 
awards  obtained  in  competitions  or  expositions  organized  or 
authorized  by  an  official  entity,  and  those  granted  by  Academic 
Corporations  or  Societies  legally  constituted  and  recognized. 

ABT.  43.  The  public  use  of  these  recompenses,  as  well  as 
the  right  to  make  mention  of  them  on  a  product  or  its  wrapper, 
as  well  as  in  circulars,  announcements,  handbills,  cards,  en- 
velopes and  other  commercial  papers,  belongs  exclusively  to 
those  individuals  and  firms  that  may  have  obtained  them,  and 
their  representatives,  it  being  necessary  to  indicate,  in  using 
them,  the  date  on  which  they  were  granted  and  the  entity  in 
the  exposition  or  competition  that  conceded  them. 

ABT.  44.  Spaniards  and  foreigners  established  in  Spain 
may  request  individually  or  collectively  the  inscription  in  the 
Register  of  Industrial  Property  of  the  titles,  diplomas,  or  other 
documents  that  authorize  the  distinctives  obtained  for  the  ob- 
jects of  their  production  and  trade. 

ABT.  45.  The  registration  of  industrial  recompenses  gives 
rights  to  their  possessors  to  show  them  at  the  side  of  their 
marks,  with  mention  of  their  registration. 

ABT.  46.  The  possessor  of  a  registered  industrial  recom- 
pense has  the  same  rights  that  belong  to  the  possessor  of  a 
mark,  detailed  in  Chapter  2  of  Title  II  of  this  law. 

TITLE  in 

DUBATION  OF  THE  RlQHTS  DERIVED  FBOM  THE  REGISTRATION  OF 

INDUSTRIAL  PROPERTY  AND  THE  FEES  THAT  THOSE 

INTERESTED  MUST  PAY  TO  THE  STATE 

CHAPTER  I 

•  •  •  •  •  •  •  •  •  • 

CHAPTER  II 

DURATION  AND  FEES  OF  MARKS 

ABT.  51.  The  maximum  duration  of  the  registration  of  a 
mark  .  .  .  will  be  twenty  years,  counting  from  the  date  of  the 
issue  of  the  certificate,  and  the  concession  is  understood  as  made 
for  all  Spanish  territory. 

The  registration  of  marks  will  always  be  renewable  by 
means  of  the  same  procedure  prescribed  for  obtaining  the  first 
registration. 


SPAIN  857 

ART.  52.  The  registration  of  a  mark  .  .  .  will  be  subject 
to  the  payment  of  a  fee  of  100  pesetas  in  stamped  paper  to  the 
State,  which  shall  be  made  for  periods  of  five  years  and  pro- 
gressively, in  this  form :  That  of  the  first  five-year  period,  which 
will  be  10  pesetas  for  marks  .  .  .  will  be  payable  within  fifteen 
days  from  the  publication  of  the  concession  of  the  mark  .  .  . ; 
those  of  the  three  remaining  five-year  periods  must  be  paid 
before  the  termination  in  each  year  of  that  month  in  which  the 
certificate  was  issued,  paying  20  pesetas  in  the  second  five-year 
period,  when  it  relates  to  marks,  .  .  .  30  in  the  third,  and  40  in 
the  fourth,  and  enjoying  for  the  delays  in  making  payments 
the  times  indicated  in  Art.  49,  with  the  fines  established  in  the 
same.* 

ART.  53.  The  fact  of  not  paying  any  of  the  fees  set  forth 
in  the  preceding  article  will  be  considered  as  a  renunciation  on 
the  part  of  the  interested  party  of  the  benefits  of  the  registra- 
tion and  in  virtue  thereof  the  same  will  be  forfeited. 

CHAPTER  III 

DURATION  OF  THE  REGISTRATION  OF  A  TRADE  NAME  AND  OF  INDUS- 
TRIAL RECOMPENSES,  AND  THE  FEES  THAT  THESE 
INSCRIPTIONS  MAKE  PAYABLE 

ART.  54.  The  duration  of  the  registration  of  a  trade  name 
and  of  industrial  recompenses  is  unlimited.  Nevertheless,  all 
changes  and  alterations  made  in  them  must  be  entered  in  the 
Register,  not  only  to  preserve  their  legal  validity  against  third 
parties,  but  also  because  they  may  affect  the  lapsing  of  their 
registration,  whether  it  may  be  by  the  voluntary  act  of  the  pro- 
prietor, or  by  the  extinction  of  the  firm,  or  by  the  disappearance 
of  the  legal  personality  that  possesses  it. 

ART.  55.  The  cost  of  the  inscription  of  a  trade  name  will 
be  25  pesetas,  payable  at  one  time  in  stamped  paper  to  the  State. 

For  each  inscription  of  an  industrial  recompense  5  pesetas 
will  be  payable. 

PART  IV 

PROCEDURE  WITH  RESPECT  TO  APPLICATIONS  RELATING  TO  INDUS- 
TRIAL PROPERTY,  AND  THE  ISSUE  OF  TITLES 

AND  CERTIFICATES 

ART.  56.  All  those  who  may  desire  ...  to  register  a  mark, 
.  .  .  trade  name,  or  industrial  recompense,  shall  file  the  docu- 

*ART.  49. — The  first  tax  will  be  paid  within  the  fifteen  days  following  the  publi- 
cation of  the  concession,  and  the  subsequent  taxes  before  the  end  of  that  month  in 
each  year  on  which  the  patent  was  issued,  or  else  within  the  three  months  following, 
with  a  fine  of  10,  20  or  30  pesetas,  respectively,  for  one,  two  or  three  months  of 
delay,  payable  also  in  stamped  paper  to  the  State. 


858  SPAIN 

ments  that  are  provided  for  in  this  law  in  the  Secretariats  of 
the  Provincial  Civil  Governments,  with  the  exception  of  Madrid, 
where  they  shall  be  left  directly  at  the  Ministry  of  Agriculture, 
Industry,  Commerce  and  Public  Works. 

ART.  57.  The  Chief  of  the  Registry  of  this  Department, 
as  well  as  the  Secretaries  of  the  Civil  Governments,  in  the  act 
of  receiving  the  documents  and  objects  that  are  presented,  shall 
note  in  the  special  Register  for  this  purpose,  the  day,  the  hour 
and  the  minute  of  the  presentation. 

Immediately  upon  the  receipt  thereof,  and  setting  forth  the 
circumstances  stated,  they  shall  give  a  receipt  to  whoever  may 
present  the  documents,  who  on  his  part  shall  sign  the  above 
mentioned  Register  book. 

ART.  58.  Within  a  term  of  five  days,  counted  from  the  date 
of  the  presentation,  the  Civil  Governors  of  the  Provinces  shall 
remit  to  the  Ministry  the  applications  relative  to  industrial 
property,  with  an  accompanying  certification  of  the  act  of  regis- 
tration of  each  application,  drawn  up  by  the  Secretaries  and 
vised  by  them,  the  costs  of  remitting  same  being  at  the  charge 
of  the  party  interested. 

ART.  59.  It  is  optional  with  the  interested  parties  either  to 
make  the  applications  themselves  or  by  means  of  representa- 
tives upon  whom  they  confer  or  have  conferred  sufficient  power 
for  the  same. 

The  Government  of  His  Majesty  shall  regulate  the  condi- 
tions of  the  service ;  but  shall  not  deprive  any  one  that  possesses 
any  professional  title,  and  is  qualified  for  the  exercise  of  his 
profession,  by  having  paid  the  industrial  tax,  of  the  right  that 
is  recognized  in  the  preceding  paragraph  of  acting  as  the  rep- 
resentative of  another. 

CHAPTER  I 


CHAPTER  II 

APPLICATIONS  FOR  MARKS  .    .    . 

ART.  74.  The  documents  that  must  be  presented  in  order 
to  obtain  registration  of  a  mark,  design  or  model,  are: 

1.  An  application  to  the  Minister,  formulating  the  petition 
for  the  mark  .  .  .  whose  registration  it  is  desired  to  obtain, 
containing  always  in  it  the  Christian  name,  surname  or  style, 
and  habitual  domicile,  of  the  interested  party,  as  well  as  that 
of  his  representative,  if  he  should  transact  the  business;  the 


SPAIN  859 

concrete  enumeration  of  the  products  that  the  mark  that  is 
solicited  is  to  distinguish,  and  an  indication  as  to  whether  the 
mark  has  already  been  registered  abroad  or  not; 

2.  A  detailed  description  in  duplicate,  in  which  is  expressed 
with  all  clearness  the  class  of  the  mark  adopted,  the  figures 
and  signs  that  it  may  contain,  the  goods  upon  which  it  will  be 
affixed,  imprinted  or  employed  and  the  name  of  its  owner.  .  .  . 
This  description  shall  be  written,  typewritten  or  printed  on 
sheets  of  paper  32  x  22  centimetres,  with  a  margin  on  the  left, 
in  which  shall  be  affixed  a  stamp  of  five  centimes  de  peseta  on 
each  sheet; 

To  each  one  of  the  copies  of  this  description  shall  be  added, 
stitched,  a  sheet  of  equal  size,  or  double,  with  the  design  of  the 
mark  .  .  .  that  it  is  desired  to  register,  expressing  its  scale, 
and  in  which  shall  be  represented  the  shadings,  tints  or  colors 
that  the  interested  party  believes  it  convenient  to  employ,  in 
order  to  give  an  exact  idea  of  the  mark,  design  or  model.  This 
sheet  shall  also  bear  affixed  the  corresponding  adhesive  stamp. 

The  descriptions  to  which  the  preceding  paragraphs  refer 
shall  be  formulated  in  the  Castillian  language,  without  abbre- 
viations, corrections  or  erasures. 

3.  Another  description,  similar  to  the  foregoing,  written  by 
hand,  typewritten,  autographed,  or  printed  on  half  sheets  of 
foolscap  written  on  one  side  only  for  its  publication  in  the 
Boletin; 

4.  An  engraving  or  typographic  cliche  in  order  that  the 
design  of  the  mark,  .   .    .  may  be  printed  in  black,  to  be  pub- 
lished jointly  with  the  description  in  the  Boletin.    It  shall  be 
accompanied,  moreover,  by  ten  proofs  or  impressions  of  the 
design  referred  to.    This  cliche  shall  have  at  the  maximum  10 
centimetres  of  length  by  8  in  width; 

•  ••••••••• 

5.  Foreigners,  subjects  of  the  countries  that  belong  to  the 
Union,  or  that  by  virtue  of  the  Treaties  enjoy  the  rights  of 
reciprocity,  must  present  a  certificate  of  registration  in  the 
country  of  origin  of  the  mark  ....     This  document  must  be 
legalized  by  our  Consul,  and  the  signature  of  the  latter,  by  the 
Minister  of  State.    It  will  be  sufficient  if  the  translation  of  the 
certificate  be  private. 

ART.  75.  When  manufacturers  desire  to  keep  secret  the 
method  and  form  employed  in  the  mark  .  .  .,  they  shall  so 
express  it  in  their  application,  describing  it  in  a  closed  and 
sealed  envelope,  which  only  will  be  opened  in  case  of  litigation. 

ART.  76.    All  the  documents  named  in  the  preceding  articles 


860  SPAIN 

shall  be  presented  in  the  form  mentioned  in  the  final  paragraph 
of  Art.  60.* 

ART.  77.  The  application  being  received  and  registered, 
the  descriptions  shall  be  compared  with  each  other  and  the 
exactitude  of  the  same  with  relation  to  the  cliche  shall  be  verified. 

In  the  affirmative  case  the  documents  shall  be  sealed  and 
signed  by  the  Secretary,  cancelling  the  adhesive  stamps,  and, 
if  there  should  be  no  defects  in  the  documentation,  such  as  the 
lack  of  the  cliche  or  of  the  descriptions,  they  shall  be  published 
immediately  in  the  Boletin  Oficial  de  la  Propiedad  Intelectual  e 
Industrial. 

ART.  78.  If  defects  shall  be  found  in  the  papers,  they  shall 
be  stated  in  the  application  papers  and  there  shall  be  conceded 
a  term  that  shall  not  exceed  two  months,  in  order  that  the  in- 
terested parties  or  their  representatives  may  amend  them. 

ART.  79.  The  notification  of  the  existence  of  these  defects 
shall  be  made  by  means  of  the  Boletin,  publishing  in  it  the  peti- 
tion for  the  mark  .  .  .  with  their  corresponding  descriptions 
and  cliches. 

ART.  80.  In  the  notification  must  be  clearly  specified  the 
defect  referred  to.  The  term  for  the  amendment  of  which  Art. 
78  treats  shall  begin  to  count  from  the  publication,  being  un- 
prorogable,  and  once  expired,  the  application  for  the  registra- 
tion of  the  mark  .  .  .  shall  be  declared  void. 

ART.  81.  The  publication  of  which  the  preceding  article 
speaks  being  made,  and  counting  from  its  date,  a  term  of  two 
months  shall  be  conceded  in  order  that  those  that  believe  that 
they  have  a  right  to  oppose  a  mark  .  .  .  may  formulate  the 
corresponding  opposition  by  means  of  a  notice  presented  to  the 
Ministry. 

ART.  82.  Having  executed  what  has  been  provided  in  the 
preceding  articles  the  Eegistry  of  Industrial  and  Commercial 
Property  shall  report,  stating: 

1)  If  the  form  of  the  application  and  all  the  papers  sent 
in  by  the  interested  party  are  found  to  agree  with  what  is  pro- 
vided in  Art.  74  of  this  law. 

2)  When  that  which  is  to  be  registered  is  a  mark,  if  it  is 
found  to  be  included  in  any  of  the  cases  of  Art.  28.  ... 

3)  Whether,  in  view  of  all  that  set  forth,  it  shall  proceed 
to  concede  or  refuse  the  registration  of  the  mark  .... 

*ART.  60.  (Referring  to  Patents.) — All  these  documents  shall  be  presented  in  an 
envelope  of  a  size  and  sufficient  resistance  in  order  that  it  may  contain  them  without 
suffering  any  damage,  and  without  the  necessity  of  folding  them.  O'n  the  outside  of 
this  envelope  the  Secretary  of  the  Civil  Government  or  the  Chief  of  the  Registry  of 
the  Ministry,  shall  stamp  the  seal  of  their  respective  offices,  and  shall  set  forth  the 
date,  hour  and  minute  of  their  presentation. 


SPAIN  861 

ART.  83.  When  it  is  found  that  a  mark  is  comprised  in  the 
cases  mentioned  in  paragraph  (f)  of  the  above  cited  Art.  28, 
whether  the  instrument  in  opposition  be  formulated  or  not, 
according  to  the  tenor  of  paragraph  4  of  Art.  32,  the  resem- 
blance noticed  will  be  officially  communicated  to  the  petitioner, 
in  order  that  within  the  term  of  fifteen  days  he  may  retire  the 
petition,  if  it  be  thus  convenient  to  him,  modify  it  sufficiently 
to  destroy  the  likeness,  or  present  a  legal  document  by  which 
the  original  grantee  consents  to  the  registration. 

ART.  84.  The  term  within  which  the  Registry  of  Industrial 
Property  shall  have  in  order  to  issue  the  report  prescribed  in 
Art.  82  shall  be  fifteen  days,  to  count  from  the  date  on  which 
terminates  the  term  of  two  months  for  the  publication  in  the 
Boletin  of  the  marks,  designs  and  models. 

When  the  fact  of  which  the  preceding  article  speaks  shall 
occur,  the  Registry  shall  give  its  report  within  the  term  of 
three  days,  to  count  from  the  termination  of  the  term  expressed 
in  said  article. 

ART.  85.  The  Minister,  or  the  Director  General  of  Agri- 
culture, Industry  and  Commerce,  by  delegation  of  the  same, 
shall  decide  the  applications  to  which  this  chapter  refers  within 
a  term  of  fifteen  days. 

ART.  86.  Against  the  decisions  mentioned  in  the  preceding 
article  in  matters  of  marks  .  .  . ,  the  interested  parties  may 
enter  a  contentious-administrative  appeal  in  the  form  and  con- 
ditions provided  for  by  the  laws  in  force  in  the  matter. 

ART.  87.  The  registration  of  the  mark  .  .  .  being  granted, 
the  decree  having  been  published  in  the  Boletin  Oficial,  and 
before  proceeding  with  the  final  inscription  in  the  registration 
albums,  the  interested  parties  or  their  representatives,  within 
the  fifteen  days  following,  shall  pay  in  Government  stamped 
paper  the  quota  corresponding  to  the  first  five  years. 

Should  the  payment  of  which  the  preceding  paragraph 
speaks  not  be  made  within  the  term  specified,  the  mark  .  .  . 
shall  not  be  inscribed  in  the  Registers,  the  lapsed  grant  annul- 
ling it. 

ART.  88.  The  payment  having  been  made,  there  shall  be 
signed  within  a  term  of  eight  days,  counting  from  the  date  on 
which  it  was  made,  the  certificate-titles,  in  the  lower  part  of 
which  shall  be  left  a  sufficient  space  in  order  that  there  may 
be  affixed  to  it  one  of  the  proofs  of  the  mark,  .  .  .  authenticated 
with  the  seal  of  the  Registry  and  signed  by  the  Secretary.  On 
the  back  of  the  certificate  shall  be  printed  the  entire  text  of 
Art.  32  of  this  law.  This  certificate-title  shall  be  furnished  with 


862  SPAIN 

a  stamp  of  the  value  specified  by  the  law  in  force  on  this  matter, 
which  will  be  cancelled  in  the  form  prescribed  in  Art.  68.* 

ART.  89.  The  titles  being  completed,  they  will  be  placed  at 
the  disposition  of  the  interested  parties,  or  their  representa- 
tives, to  whom  they  will  be  delivered  jointly  with  one  of  the 
copies  of  the  description  of  the  mark  that  accompanied  their 
petition,  they  signing  the  receipt  in  the  file,  which  with  this 
proceeding  will  be  considered  as  complete,  and  shall  be  trans- 
ferred to  the  archives. 

CHAPTER  III 

APPLICATIONS  FOB  THE  REGISTRATION  OF  TRADE  NAMES  AND  INDUS- 
TRIAL, RECOMPENSES 

ART.  90.  The  documents  necessary  for  the  registration  of 
a  trade  name  or  of  industrial  recompenses  are: 

1.  A  petition  soliciting  the  registration,  and  setting  forth 
the  Christian  name,  surname  and  habitual  domicile  of  the  in- 
terested party  and  of  his  representative,  if  the  latter  shall  un- 
dertake the  registration; 

2.  A  complete  and  detailed  description  of  the  trade  name 
accompanied  by  three  copies  thereof; 

3.  A  typographical  cliche  (electrotype)   which  may  be  a 
reproduction,  in  reduced  size,  of  the  said  trade  name,  used  to 
distinguish  the  establishment ;  and 

4.  Ten  proofs  or  impressions  of  the  above  mentioned  cliche. 
For  industrial  recompenses,  in  place  of  the  documents  re- 
quired under  the  numbers  2,  3,  and  4,  there  shall  be  presented: 

a)  The  originals  of  the  diplomas  and  other  documents  that 
prove  the  ownership  of  the  recompenses  that  are  to  be  regis- 
tered, which  shall  be  opportunely  returned  to  the  interested 
party  after  establishing  his  identity; 

b)  A  duplicate  note,  if  the  diploma  does  not  express  it,  of 
the  nature  of  the  products  to  which  it  refers,  or  the  motive  for 
which  the  recompense  was  granted ;  and 

c)  A  literal  copy  of  the  said  diplomas  if  they  are  Spanish, 
or  a  private  translation  if  they  should  be  in  a  foreign  tongue. 

*ART.  68.  (Referring  to  Patents) — The  payment  to  which  the  preceding  article 
refers  being  made  within  a  term  of  eight  days,  counting  from  the  date  of  same,  the 
title  of  the  patent  shall  be  issued  and  signed,  and  after  presentation  by  the  interested 
party  or  his  representative,  of  a  stamp  to  be  affixed  to  the  patent,  of  the  value  required 
by  the  Stamp  Act  in  force,  an  entry  having  been  made  in  the  corresponding  Register 
book,  the  stamp  having  been  cancelled  with  the  seal  of  the  Bureau,  it  shall  then  within 
three  days  be  placed  at  the  disposition  of  interested  parties  or  their  representatives, 
together  with  one  of  the  copies  of  the  specification  and  drawing  accompanying  the 
application,  they  signing  a  receipt  for  the  documents  thus  issued;  with  this  transaction 
the  case  is  concluded  and  shall  be  passed  to  the  archives. 


SPAIN  863 

.These  copies  or  translations  shall  be  made  on  stamped  paper 
of  one  peseta. 

ART.  91.  The  presentation  of  these  petition  documents 
shall  be  made  in  the  form  prescribed  in  Art.  56  and  in  the  final 
paragraph  of  Art.  60.* 

AST.  92.  The  proceedings  in  these  applications  in  the  Reg- 
istry of  Industrial  Property  and  the  terms  for  the  correction 
of  their  defects,  if  they  should  have  any,  publication  in  the 
Boletin,  oppositions  to  the  registration  of  the  trade  names,  ap- 
peals against  decisions  that  are  given,  the  payment  of  the  fees 
due  to  the  Registry  and  to  which  Art.  55  refers,  shall  be  those 
provided  for  in  the  preceding  chapter,  without  any  other  excep- 
tion, treating  of  industrial  recompenses,  than  that  of  proceeding 
with  its  registration  within  thirty  days  after  the  announcement 
of  the  petition  in  the  Boletin  Oficial,  except  in  case  of  opposition. 

TITLE  V 

ASSIGNMENT  AND  TRANSFER  OF  RIGHTS  OF  INDUSTRIAL  PROPERTY 

ART.  93.  In  order  that  the  assignment  and  transfer  of 
rights  of  industrial  property  in  their  various  manifestations 
may  have  effect  against  third  parties,  it  is  indispensable  that 
it  be  done  by  a  public  instrument. 

ART.  94.  The  registration  of  every  act  involving  a  modi- 
fication, whatsoever  may  be  its  importance,  in  a  right  of  indus- 
trial property,  must  be  effected  directly  by  presentation  at  the 
Office  of  the  Registry  of  Industrial  Property  of  a  notarially 
legalized  copy  of  the  act  or  contract  of  cession  or  modification 
of  the  right,  accompanying  it  with  15  pesetas  in  Government 
stamped  paper  for  the  fees  of  registration. 

ART.  95.  The  official  charged  in  the  Registry  with  the  entry 
in  the  corresponding  book  of  the  transfers  and  modifications  of 
rights  of  industrial  property,  after  having  satisfied  himself  by 
the  examination  of  the  registry  books  and  of  the  respective  files 
that  the  .  .  .  mark  .  .  .  had  all  its  legal  validity  at  the 
date  of  the  execution  of  the  act  of  transfer,  shall  enter  the  par- 
ticulars on  the  respective  file  and  shall  propose  the  entry,  and 
that  the  corresponding  certificate  shall  be  issued  in  favor  of 
the  new  proprietor  if  he  may  have  solicited  it. 

ART.  96.  There  shall  be  published  monthly  in  the  Boletin 
de  la  Propiedad  Intelectual  e  Industrial  a  detailed  statement  of 
the  transfers  and  modifications  of  the  rights  of  industrial  prop- 
erty that  have  been  registered  in  the  preceding  month. 


*See  footnote  to  Art.  76. 


864  SPAIN 

TITLE  VII 
NULLITY  AND  FORFEITURE  OF  EIGHTS  OF  INDUSTRIAL  PROPERTY 

•  •••••••*• 

CHAPTER  II 

FORFEITURE  OF  MARKS,  DESIGNS  AND  MODELS 
ART.  109.    Marks,  designs  and  models  shall  lapse: 

1)  For  having  outrun  the  time  fixed  for  their  duration; 
As  the  registration  of  marks  is  renewable,  the  interested 

parties  must  demand,  in  order  to  avoid  the  declaration  of  laps- 
ing, the  renewal  before  the  expiration  of  the  term  of  twenty 
years  for  which  they  were  conceded ; 

2)  For  lack  of  payment  of  any  of  the  quinquennial  taxes 
established  in  Art.  52  of  this  law ; 

3)  By  the  extinction  of  the  personality  to  whom  belonged 
the  use  of  the  mark,  .  .  .  without  being  legally  substituted  by 
whoever  is  to  succeed  him,  or  by  the  failure  to  use  the  said 
mark  .   .   .  during  three  consecutive  years,  unless  in  cases  of 
force  majeure  duly  proven; 

4)  By  executory  sentence  of  a  competent  Court,  but  only 
as  regards  the  person  defeated  by  the  judgment; 

5)  By  the  wish  of  the  interested  party; 

6)  At  the  instance  of  persons  or  corporate  bodies  that,  by 
virtue  of  the  present  law,  may  have  right  to  the  use  of  marks, 
.  .  .  who  may  demand  at  any  time  the  avoidance  of  those  already 
registered,  presenting  to  this  eff ect  the  necessary  justifications : 
when  as  the  result  of  these,  questions  of  ownership  and  posses- 
sion arise,  the  Minister  shall  suspend  the  course  of  the  adminis- 
trative proceedings,  and  shall  refer  the  parties  to  the  ordinary 
Courts  in  order  that  they  may  establish  the  rights  to  which  they 
believe  themselves  entitled. 

ART.  110.  Avoidance  may  be  declared  ex  oficio  by  the  Ad- 
ministration when  it  is  possessed  of  the  necessary  data  for 
doing  it. 

ART.  111.  Three  months  having  passed  from  the  publica- 
tion in  the  Boletin  de  la  Propiedad  Intelectual  e  Industrial  of 
the  avoidance  of  the  registration  of  a  mark,  this  distinctive  sign 
shall  remain  free,  at  the  disposition  of  him  that  may  desire  to 
adopt  it  and  to  solicit  a  new  registration  in  his  name  according 
to  the  present  law. 

CHAPTER  in 

LAPSING  OF  THE  USE  OF  A  TRADE  NAME  AND  OF  INDUS- 
TRIAL RECOMPENSES 
ART.  112.    The  right  to  the  use  of  a  trade  name  and  of 


SPAIN  865 

industrial  recompenses  will  lapse : 

1)  By  the  disappearance  or  extinction  of  the  personality 
to  whom  these  belong,  without  being  legally  substituted  by  who- 
ever may  succeed  him,  or  by  the  non-use  of  the  said  name  and 
recompense,  for  industrial  and  commercial  purposes,  during 
three  consecutive  years,  except  in  cases  of  force  majeure  duly 
proven ; 

2)  By  final  judgment  of  a  competent  Court. 

ART.  113.  The  petition  for  the  registration  of  a  trade  name 
or  industrial  recompense  shall  be  declared  null  if  the  registra- 
tion fees  pointed  out  in  Art.  55  have  not  been  paid. 

TITLE  VIII 

PUBLICITY  OF  THE  OFFICIAL  FILES  AND  OF  THE  REGISTRY  OF 
INDUSTRIAL  PROPERTY 

ART.  114.  The  archives  of  the  Registry  of  Industrial  Prop- 
erty are  public,  and  shall  be  open  during  the  office  hours  of  the 
Ministry,  for  the  purpose  of  examining  therein,  after  previous 
petition  in  writing,  .  .  .  the  designs  and  descriptions  of  marks, 
of  trade  names,  and  the  copies  of  diplomas  of  industrial  recom- 
penses. 

ART.  115.  It  will  be  permitted  to  make  copies  of  these 
documents,  and  if  the  interested  parties  should  desire  to  have 
them  certified  by  the  Secretary  of  the  Registry  of  Industrial 
Property,  the  latter,  after  comparing  them  with  the  respective 
originals,  shall  certify  them  with  his  signature  and  the  seal  of 
the  Registry. 

The  dues  that  must  be  paid  for  this  service  shall  be  five 
pesetas  in  Government  stamped  paper. 

ART.  116.  The  Registry  of  Industrial  Property  existing 
in  the  Ministry  of  Agriculture,  Industry,  Commerce  and  Public 
Works  will  be  the  administrative  organism  charged  with  this 
service.  Its  organization  and  functions,  apart  from  those  defi- 
nitely pointed  out  by  this  law,  shall  be  determined  by  the  Minis- 
ter, who  shall  fix  the  number  and  stipend  of  the  officials  who 
may  compose  it,  taking  into  account  and  having  care  that  they 
satisfy  the  legal-administrative  and  technical  necessities  of  office 
that  the  best  service  requires. 

ART.  117.  The  Registry  of  Industrial  Property  shall  edit 
and  publish  in  the  Boletin  Oficial  of  the  department  within  the 
first  quarter  of  each  year  a  report,  in  which  shall  be  enumerated 
the  work  done  during  the  previous  year,  followed  by  a  com- 
parative statement  of  the  receipts  that  the  various  matters 
transacted  may  have  brought  in  and  the  expenses  incurred  for 
the  personnel  and  material,  to  the  end  that  it  may  be  known 


866  SPAIN 

with  exactitude  what  this  branch  of  the  Public  Administration 
produces  or  costs  the  State. 

ART.  118.  In  compliance  with  the  stipulations  of  Art.  12 
of  the  International  Convention  of  March  20,  1883,  the  archives 
and  deposit  of  models,  the  charge  of  which  belongs  to  the  Regis- 
try of  Industrial  Property,  shall  be  organized  in  a  form  which 
permits  the  communication  to  the  public  ...  of  marks,  and,  in 
general,  of  whatever  pertains  to  the  service  of  industrial 
property. 

In  this  deposit  and  archives  shall  be  kept  all  completed 
files  referring  to  industrial  property  in  its  various  manifesta- 
tions, the  models  or  samples  that  may  have  accompanied  the 
same,  the  cliches  of  the  marks,  a  copy  of  the  album-registers 
of  the  same,  as  well  as  the  official  publications  referring  to  this 
service  that  are  received  at  the  Registry,  and  those  of  a  techno- 
logical character  that  may  be  acquired  by  the  same. 

ART.  119.  These  general  archives  shall  be  in  the  charge  of 
one  of  the  officials  of  the  Registry  of  Industrial  Property,  who, 
named  by  the  Minister,  with  the  title  of  * '  Secretary  of  the  Regis- 
try of  Industrial  and  Commercial  Property,"  shall  issue  such 
certificates  as  are  solicited  of  the  documents  existing  in  the 
archives  and  the  entries  at  the  Registry,  upon  the  payment  of 
the  fees  that  may  be  due,  according  to  the  length  of  the  docu- 
ment, at  five  pesetas  per  sheet,  which  must  be  paid  in  Govern- 
ment stamped  paper. 

ART.  120.  These  certifications,  duly  vised  by  the  Chief  of 
the  Registry,  shall  be  received  as  evidence  in  the  courts,  and 
in  order  that  they  may  have  legal  effect  in  foreign  countries, 
the  signatures  of  the  Chief  and  the  Secretary  shall  be  registered 
in  the  Legations  or  Consulates  of  all  the  countries  that  may 
have  accredited  their  representatives  in  Madrid,  in  order  that 
consular  legalization  may  be  directly  procured  of  documents 
referring  to  industrial  property. 

ART.  121.  The  Boletin  de  la  Propiedad  Intelectual  e  In- 
dustrial created  by  Royal  Decree  of  August  2, 1886,  is  the  organ 
of  the  Registry  of  Industrial  Property,  and  there  shall  be  made 
therein  all  the  publications  referred  to  in  Arts.  18,  62,  67,  74,  77, 
79,  87,  92,  96,  108,  and  111  of  this  law,  by  means  of  fortnightly 
statements,  unless  it  is  ordained  to  the  contrary  by  any  of  the 
cited  articles. 

ART.  122.  In  addition  to  these  statements,  there  shall  be 
published  in  the  Boletin  corresponding  to  the  sixteenth  day  of 
each  month  another  of  all  the  titles  of  ...  certified  titles  of 
marks  .  .  .  issued  in  the  preceding  month.  In  the  number  of 
the  Boletin  corresponding  to  the  first  day  there  shall  be  in- 


SPAIN  867 

serted,  lastly,  another  statement  of  the  .  .  .  marks  .  .  .,  the 
annual  or  quinquennial  taxes  for  which  must  be  paid  within  the 
month  next  following  and  of  those  others  that  may  be  satisfied 
by  means  of  a  fine. 

ART.  123.  For  the  formation  of  the  subject-matter  index 
referred  to  in  Art.  5  of  the  above  cited  Eoyal  Decree  of  August 
2,  1886,  and  of  the  catalogue  mentioned  in  the  additional  dis- 
positions of  this  law,  the  following  technical  nomenclature,  com- 
posed of  ten  principal  groups,  each  one  of  them  subdivided  into 
various  classes,  shall  be  strictly  adhered  to,  each  of  these  com- 
prising various  heads,  to  which  may  be  added  others  pertaining 
to  the  same  class,  whenever  the  presence  of  new  matter  to  cata- 
logue demands  it,  the  rectifications  and  explanations  that  may 
be  necessary  to  be  made  being  reserved  for  the  governing  au- 
thorities of  the  Administration. 

TECHNICAL  NOMENCLATURE  FOR  THE  CLASSIFICATION  OF  APPLICA- 
TV)NS  RELATING  TO  INDUSTRIAL  PROPERTY 

First  group — Agriculture  and  alimentation 
Class  1.  Farming  implements ;  agricultural  machinery. 
"      2.  Manures,  fertilizers,  latrines,  insecticides. 
' '      3.  Agricultural  and  forestry  exploitations ;  cattle-raising. 
"      4.  Horticulture,  gardening,  agriculture  and  sericulture. 
"      5.  Cereals,  milling,  bread  making,  pastes  and  starches. 
"      6.  Food  substances  and  preserves;  receptacles. 
"      7.  Sugars,    coffees,    chocolates,    pastry,    confectionery, 

syrups. 

"      8.  Vine  culture,  wines,  musts,  beers,  vinegars. 
"      9.  Distilling,  alcohols,  spirits,  liquors. 
"    10.  Gaseous  beverages,  artificial  ice,  refrigerators. 

Second  group — Mining  and  metallurgy 
Class  1.  Exploitation  of  mines,  quarries,  baths  and  mineral 

waters. 

"      2.  Combustibles,  hydrocarbons  and  agglomerates. 
"      3.  Industrial  furnaces  and  kilns,  gasogenes. 
"      4.  Smelting  and  manufacture  of  iron  and  steel. 
"      5.  Forging,  rolling  and  tempering  of  iron  and  steel. 
"      6.  Various  metals,  alloys,  amalgams. 
"      7.  Wires,  needles,  pins,  nails. 
"      8.  Cables,  chains,  metallic  textures. 
"      9.  Sheet  iron,  tinplates  and  beaten  tin. 
"    10.  Tools,  implements,  machines. 

Third  group — Motors  and  machines 
Class  1.  Motors  for  muscular  force. 
"      2.  Air  motors,  windlasses. 


868  SPAIN 

"      3.  Hydraulic  motors. 

"      4.  Gas-  and  miscellaneous  motors. 

"      5.  Steam  motors. 

"      6.  Steam  generators,  boilers  in  general. 

"      7.  Accessories  for  motors  and  steam  generators. 

"      8.  Organs  of  transmission  and  similar  articles. 

"      9.  Compressing  presses,  filter-presses. 

"    10.  Miscellaneous  machines  and  apparatus. 

Fourth  group — Chemical  industries 
Class  1.  Illuminating  gas  and  its  accessories. 

"      2.  Oils  and  fats,  candles,  soaps,  lye. 

"      3.  Wax  chandlery,  perfumery,  essences. 

"      4.  Gums,  resins,  varnishes,  caoutchoucs,  japans,  gutta- 
percha. 

"      5.  Colors,    dyeing    materials,    inks,    mordants,    driers, 
enamels. 

"      6.  Albumen,  gelatine,  glues. 

"      7.  Hides  and  skins,  tanned  leather,  leather  straps,  black- 
ing. 
8.  Paper  of  all  kind,  card  board. 

"      9.  Painted  papers,  cigarette  paper. 

"    10.  Chemical,  pharmaceutical  and  Various  products  and 
processes. 

"    11.  Explosives  for  industrial  uses. 

Fifth  group — Textiles  and  clothing 
Class  1.  Defibration,  preparation,  spinning  and  twisting. 

"      2.  Woven  goods  of  all  kinds. 

"      3.  Stiffening,  bleaching,  dyeing,  printing. 

"     4.  Knitted  goods,  nets  or  webs. 

"      5.  Tulles,  embroidery,  laces,  silk  laces. 

"      6.  Sewing  machines,  braiding  machines,  etc. 

"      7.  Linen  goods,  corsets,  dresses,  hats. 

"      8.  Fancy  trimming,  haberdashery,  gloves,  ties. 

"      9.  Umbrellas,  canes,  fans,  flowers  and  feathers. 

"    10.  Footwear,  cordage,  articles  made  of  esparto  grass, 
mats. 

Sixth  group — Liberal  arts — Domestic  economy  and  small 

industries 
Class  1.  Works  of  art,  engraving  and  photography. 

"      2.  Typography,  lithography  and  their  derivatives. 

"      3.  Music,  instruments  and  accessories. 

"      4.  Jewelry,  hardware,  and  writing  and  drawing  materials. 

"      5.  Furniture,  upholstery,  decorations,  and  material  for 
teaching,  gymnasia. 


SPAIN  869 

"      6.  Culinary  art,  household  furniture,  kitchen  utensils. 

"      7.  Cutlery,  table  articles,  bottling,  corks. 

"      8.  Basket  making,  Morocco  leather,  turning,  cardboard 

and  other  boxes. 

"      9.  Tobacco,  phosphorous,  articles  for  smokers. 
"    10.  Toys,  dolls,  sundry  industries. 

Seventh  group — Electricity  and  scientific  instruments 
Class  1.  Products,  accumulators,  conductors,  lightning-conduc- 
tors. 

"      2.  Electric  lighting,  electric  traction. 

"      3.  Telegraphy,  telephony. 

"      4.  Various  electric  apparatus. 

"      5.  Watch  making,  instruments  of  precision. 

"      6.  Meters  of  all  kinds,  caligraphic  apparatus. 

"      7.  Testing  apparatus,  pharmaceutical  accessories. 

11      8.  Medical  and  surgical  instruments  and  apparatus. 

' '      9.  Physical,  chemical,  astronomical  and  geodetical  instru- 
ments. 

"    10.  Weights  and  measures  and  instruments  for  weighing. 

Eighth  group — Constructions 

Class  1.  Materials:   timber,  lime,   cements,   asphalt,   artificial 
stone. 

"      2.  Ceramics,  bricks  and  tiles,  pottery,  earthenware  and 
porcelain,  glass. 

"      3.  Locks,  carpentry,  cabinet  making,  Venetian  blinds. 

"      4.  Bridges,  roofs,  enclosures,  pavements. 
•  "      5.  Foundations,  dredging,  sounding,  perforating. 

1 '      6.  Construction,  architectural  works,  scaffolding. 

"      7.  Heating,  ventilation,  lighting,  sanitation. 

"      8.  Lifting  apparatus,  capstans,  lathes,  elevators. 

"      9.  Raising  and  conducting  of  water  and  other  fluids. 

"    10.  Fire  extinguishing  materials,  incombustible  products. 
Ninth  group — Veterinary  science,  hunting,  fishing  and  trans- 
portation 
Class  1.  Veterinary  science,  domestic  animals. 

"      2.  Aviculture,  hunting,  utensils. 

"      3.  Pisciculture,  fishing,  apparatus. 

"      4.  Carriage  making,  velocipedes  (bicycles). 

"      5.  Harness  and  accessories. 

"      6.  Railways,  stationary  and  rolling  material. 

"      7.  Sea  and  river  navigation. 

"      8.  Aerial  navigation,  parachutes. 

"      9.  Life-saving,  safety  and  swimming  apparatus. 

M    10.  Transportation  and  funeral  effects. 


870  SPAIN 

Tenth  group — Military  art 
Class  1.  Powders  and  explosives. 
"      2.  Cartridges  and  projectiles. 
' '      3.  Portable  and  other  fire  arms. 
"      4.  Guns  and  carriages. 
"      5.  Batteries  and  armors. 
"      6.  Torpedoes  and  torpedo  boats. 
"      7.  War  vessels. 
"      8.  Sanitary  material. 
"      9.  Field  material. 
"    10.  Equipment,  various  articles. 

TITLE  IX 

INDICATIONS  OF  ORIGIN 

ART.  124.  There  is  understood  by  indication  of  origin  the 
designation  of  a  geographical  name,  as  a  place  of  the  manu- 
facture, elaboration,  or  extraction,  of  a  product. 

The  name  of  a  place  of  production  belongs  collectively  to  all 
the  producers  that  are  established  in  it. 

ART.  125.  No  one  has  a  right  to  use  the  name  of  a  place 
of  manufacture  in  order  to  designate  a  natural  or  manufac- 
tured product  coming  from  another  place. 

ART.  126.  Falsity  of  indication  of  origin  is  not  presumed 
when  a  geographical  name  is  used  for  the  denomination  of  a 
product,  which,  being  already  generic,  indicates  in  commercial 
language  the  nature  and  name  of  origin  of  the  product.  This 
exception  is  not  applicable  to  the  products  of  the  vine. 

ART.  127.  Foreign  products  with  the  marks  of  Spanish 
producers  remain  prohibited  and  will  be  seized  upon  their  en- 
trance at  Spanish  custom  houses,  whether  the  marks  are  com- 
pletely new  or  constitute  a  modification  or  falsification  of  regis- 
tered marks,  there  being  reserved  to  the  proprietors  of  the  false 
marks  the  rights  that  the  law  recognizes. 

ART.  128.  Goods  manufactured,  either  in  Spain  or  in 
foreign  countries,  may  bear,  respectively,  the  name  or  mark  of 
a  foreign  or  Spanish  merchant,  on  condition  that  the  indications 
of  the  country  of  manufacture,  or  of  production,  are  plainly 
visible  and  that  the  proper  authorization  for  using  them  has 
been  obtained. 

ART.  129.  Notwithstanding  the  provisions  in  the  preceding 
article,  the  courts  shall  consider  as  a  presumption  of  false  in- 
dication of  origin  the  fact  that  objects  imported  from  a  foreign 
country,  not  being  Spanish- American,  bear  a  Spanish  mark  or 
inscription  in  the  Spanish  language. 

ART.  130.    If  the  products  imported  from  a  foreign  country 


SPAIN  871 

bear  a  name  of  origin  that  is  identical  with  or  similar  to  that 
of  a  place  within  Spanish  territory,  such  name  must  be  followed 
by  the  name  of  its  nation. 

TITLE  X 

UNFAIR  COMPETITION 

ART.  131.  There  is  understood  by  unfair  competition  all 
efforts  to  avail  one's  self  unfairly  of  the  advantages  of  an 
industrial  or  commercial  reputation  acquired  through  the  efforts 
of  another  who  may  have  his  property  protected  by  the  present 
law. 

ART.  132.  There  shall  be  considered  as  acts  constituting 
unfair  competition : 

a)  The  imitation  of  the  signs  or  show-bills  of  shop  win- 
dows, facades,  furniture,  or  anything  else  that  may  give  rise  to 
confusion  with  another  establishment  of  the  same  class  con- 
tiguous or  very  close  by; 

b)  The  imitation  of  the  wrappers  used  by  a  competitive 
house  in  such  a  form  that  it  may  induce  to  confusion; 

c)  Selection,  as  a  firm  name,  of  a  title  in  which  is  included 
the  name  of  a  locality  known  for  the  existence  of  a  renowned 
establishment,  with  the  object  of  illicitly  availing  one's  self  of 
its  reputation; 

d)  Knowingly  disseminating  false  assertions  against  a  rival 
with  the  object  of  depriving  him  of  his  clientele ; 

e)  Publishing    advertisements,    announcements    or    news- 
paper articles  that  tend  to  depreciate  the  quality  of  the  prod- 
ucts of  a  competitor ; 

f)  Advertising  one's  self  in  a  general  way  and  contrary  to 
the  reality  of  the  facts,  as  the  depository  of  a  national  or  foreign 
product ; 

g)  The  employment,  without  competent  authorization,  of 
indications  or  terms  such  as, 1 1  prepared  according  to  the  formula 
of"  or  " prepared  according  to  the  process  of  manufacture  of" 
unless  the  formula  or  the  process  pertains  to  public  domain. 

TITLE  XI 

FALSIFICATIONS  AND  INFRINGEMENTS  OF  INDUSTRIAL  PROPERTY 

CHAPTER  I 

FALSIFICATION  AND  INFRINGEMENT  OF  PATENTS  OF  INVEN- 
TION, MARKS,  DESIGNS  AND  TRADE  MODELS 
ART.  133.     The  falsification  of  ...  marks  .    .    .  will  be 
punished  in  accordance  with  Art.  291  of  the  Penal  Code. 

ART.  134 . 

They  are  infringers  of  marks  .  .  .  that,  in  order  to  preju- 


872  SPAIN 

dice  the  rights  or  interests  of  the  legitimate  possessor,  use, 
make,  or  employ,  the  said  registered  marks  ...  or  others  that 
may  be  confounded  with  them. 

Accomplices  are  those  that,  having  knowledge,  contribute 
to  the  acts  enumerated  in  the  preceding  paragraphs. 

AET.  136.  There  shall  be  punished  with  a  fine  of  from  25 
to  125  pesetas: 

1)  Those  that  use  a  mark  .    .    .  without  having  the  cor- 
responding certificate  of  ownership,  and  allowing  it  to  be  under- 
stood, by  using  the  expression  " registered"  or  any  analogous 
word,  that  they  have  such  certificate; 

2)  Those  that,  being  legitimate  proprietors  of  a  mark,  ap- 
ply it  to  products  different  from  those  for  which  it  was  granted ; 

3)  Those  that,  having  varied  the  total  or  partial  configura- 
tion of  the  mark,  .   .    .  use  it  with  the  expression  of  "  regis- 
tered" or  other  analogous  word,  without  having  effectively 
registered  this  variation; 

4)  Those  that  remove  from  merchandise  the  marks  of  the 
producer  without  the  express  consent  of  the  latter  in  order  to 
trade  in  such  merchandise,  although  they  do  not  apply  said 
marks  to  other  products. 

Those  committing  second  offences,  these  being  understood 
to  be  those  that  have  suffered  punishment  for  the  same  offence 
within  the  last  five  years,  shall  be  punished  with  a  fine  of  from 
125  to  250  pesetas. 

In  case  of  insolvency,  the  offender  shall  suffer  substituent 
imprisonment  in  accordance  with  Art.  50  of  the  Penal  Code. 

ART.  137.  There  shall  be  punished  with  a  fine  of  from  250 
to  500  pesetas  all  that  use  prohibited  marks. 

CHAPTER  II 

IMITATION  AND  UNFAIR  COMPETITION 

ART.  138.  Those  that  use  a  mark  ...  in  ways  that  may 
lead  the  consumer  into  mistake  or  error,  confounding  it  with 
the  true  and  legitimate,  shall  be  punished  in  accordance  with 
Art.  552  of  the  Penal  Code. 

Those  that  use  a  trade  name  or  an  industrial  recompense 
in  a  manner  that  may  lead  the  purchaser  into  error  with  regard 
to  its  legitimacy  will  be  punished  with  a  fine  of  from  25  to  125 
pesetas. 

ART.  139.  In  all  the  cases  that  constitute  unfair  competi- 
tion, according  to  Art.  132,  as  well  as  in  those  of  false  indication 
of  origin,  the  authors  shall  be  punished  with  a  fine  of  from  100 
to  500  pesetas;  accomplices,  with  that  of  50  to  250;  and  con- 


SPAIN  873 

cealers,  with  that  of  25  to  175,  all  these  at  the  instance  of  the 
party  interested. 

CHAPTER  III 

INFRINGEMENT  OF  TRADE  NAME  AND  INDUSTRIAL  RECOMPENSES 

ART.  140.  The  following  shall  be  punishable  with  a  fine 
of  from  25  to  125  pesetas,  as  an  infringement  of  a  trade  name : 

1)  The  use  of  a  trade  name  as  registered,  when  it  is  not 
legally  so; 

2)  The  designation  of  an  establishment  by  means  of  a  de- 
nomination that  refers  to  another  older  one,  whose  name  is 
registered;  and 

3)  The  false  designation  of  an  establishment  as  a  branch 
of  another,  national  or  foreign,  whose  name  is  entered  at  the 
Registry. 

ART.  141.  Those  that  employ  in  bad  faith  a  trade  name 
that  has  been  registered  as  the  exclusive  property  of  another, 
living  in  the  same  locality,  shall  be  punished  with  a  fine  of  from 
50  to  250  pesetas. 

ART.  142.  There  shall  be  punished  with  a  fine  of  from  25 
to  125  pesetas  those  that  apply  industrial  recompenses  that  they 
may  have  obtained  to  products  different  from  those  for  which 
they  were  granted ; 

With  that  of  from  125  to  250  pesetas  that  use  in  the  signs 
or  showbills  of  their  establishments  advertisements,  bills,  letter- 
headings,  etc.,  reproductions  of  medals  and  industrial  recom- 
penses to  which  they  have  no  right. 

ART.  143.  There  will  be  imposed  a  fine  of  from  250  to  500 
pesetas  upon  those  that  shall  use  reproductions  of  medals  and 
of  recompenses  alluding  to  exhibitions  or  competitions  that  have 
not  taken  place. 

ART.  144.  All  the  penalties  mentioned  in  this  Title  shall 
be  understood  as  being  additional  to  indemnification  for  dam- 
ages and  injuries. 

ART.  145.  Civil  and  criminal  actions  referring  to  indus- 
trial property  shall  be  tried  before  the  ordinary  Courts  that 
may  be  competent  to  have  jurisdiction  in  the  matter. 

Industrial  juries  shall  be  organized  as  soon  as  possible, 
there  being  conferred  upon  them  the  attributes  necessary  for 
their  authority,  and  there  being  transferred  to  them  the  juris- 
diction now  conferred  upon  the  Courts  in  the  form  that  the  law 
determines. 

TITLE  XII 

TEMPORARY  PROTECTION 
ART.  146.    Temporary  protection  is  granted  ...  to  every 


874  SPAIN 

mark  .  .  .  that  may  figure  in  international  exhibitions  and  those 
of  an  official  character  that  are  celebrated  in  Spain. 

The  conditions  and  terms  of  the  said  protection  shall  be : 

a)  For  the  term  of  six  months,  counting  from  the  admis- 
sion of  the  object  in  the  exhibition,  the  said  protection  being 
without  effect  if,  in  the  term  indicated,  the  definitive  registra- 
tion of  the  .  .   .  mark  ...  is  not  solicited,  in  accordance  with 
the  prescriptions  of  this  law. 

b)  With  regard  to  the  formalities  for  the  grant  of  these 
certificates  and  their  cost,  the  grant  of  the  certificates  of  tem- 
porary protection  shall  be  gratuitous  and  be  effected  by  the 
Royal  Commissioners  of  the  Exhibitions,  keeping  a  Register 
thereof  and  communicating  them  afterwards  to  the  Ministry  of 
Agriculture,  Industry,  Commerce  and  Public  Works,  in  order 
that  they  may  be  published  in  the  Boletin  Oficial  de  la  Propiedad 
Industrial  e  Intelectual  and  in  the  Gaceta  de  Madrid.     The 
original  Registers,  at  the  termination  of  the  exhibitions,  shall 
be  transmitted  by  the  Royal  Commissioners  to  the  Ministry. 

c)  With  regard  to  the  rights  of  the  proprietor,  the  pub- 
lication or  the  employment,  unauthorized  by  the  originator, 
shall  not  be  an  obstacle  to  him  or  his  representative  demanding 
during  the  term  of  six  months  .   .   .  the  ownership  of  the  mark 
...  to  which  the  first  paragraph  of  this  article  refers,  as  well 
as  effectuating  the  filing  that  will  assure  definitive  protection 
in  all  the  countries  that  constitute  the  International  Union  for 
the  Protection  of  Industrial  Property. 

TITLE  XIII 

JURISDICTION  IN  MATTERS  OP  INDUSTRIAL  PROPERTY 
ART.  147.  Civil  actions  in  matters  of  industrial  property 
shall  be  instituted  at  the  domicile  of  the  defendant.  If  claim 
is  directed  at  the  same  time  against  the  grantee  of  the  right  to 
title  relative  to  such  property  and  one  or  more  of  his  grantees 
or  assigns,  the  competent  Judge  or  Court  will  be  that  of  the 
domicile  of  the  grantee.  If  the  claim  is  set  up  against  two  or 
more  grantees  or  assigns,  the  competence  of  the  Court  shall  be 
determined  by  the  domicile  of  any  one  of  them,  at  the  election 
of  the  plaintiff. 

In  criminal  actions  and  proceedings,  competency  is  regu- 
lated by  the  provisions  referring  to  legal  procedure  of  this 
Ordinance. 

ART.  148.  Civil  claims  shall  be  adjusted  by  the  rules  pre- 
scribed by  the  Law  of  Civil  Procedure  according  to  their  impor- 
tance ;  criminal  actions,  by  those  that  the  Law  of  Criminal  Pro- 
cedure provides. 


SPAIN  875 

ART.  149.  In  all  judicial  actions  that  have  for  their  object 
to  declare  the  nullity  or  lapsing  of  ...  a  mark  .  .  .  the 
Public  Prosecutor  shall  be  a  party. 

ART.  150.  In  the  case  of  the  preceding  article,  all  those 
deriving  rights  from  the  assignee,  according  to  the  Registry  of 
Industrial  Property,  must  be  summoned  before  the  legal 
tribunal. 

ART.  151.  As  soon  as  the  nullity  or  lapsing  is  judicially 
declared  of  a  .  .  .  mark,  .  .  .  the  court  shall  communicate 
the  sentence  that  it  has  made  executory  to  the  Ministry  in  order 
that  it  may  take  cognizance  thereof,  and  the  nullity  or  lapsing 
shall  be  published  in  the  Boletin  in  the  same  terms  as  and  at  the 
proper  time  that  this  law  orders  for  the  publication  of  ... 
marks  .  .  . 

TITLE  XIV 

TRANSITORY  PROVISIONS 

•  ••••••••• 

ART.  154.  Manufacturers,  merchants,  agriculturalists  and 
others,  whether  individual  or  collectively,  that  may  have  made 
use  of  a  mark,  shall  have  preferential  right  to  solicit,  within  a 
term  of  six  months,  counting  from  the  date  of  the  promulgation 
of  this  law,  its  registration,  subjecting  themselves  to  the  condi- 
tions established  therein. 

ART.  155.  Applications  for  marks  that  may  be  pending 
and  those  that  may  have  already  been  published  in  the  Boletin, 
awaiting  the  expiration  of  the  legal  terms  for  their  decision, 
shall  be  decided  in  conformity  with  the  prescriptions  of  this 
law,  the  parties  interested  subjecting  themselves,  so  far  as 
relates  to  the  duration  of  the  registration  and  the  payment  of 
taxes,  to  the  provisions  of  the  same. 

ART.  156.  Certificates  of  marks  issued  in  accordance  with 
the  Royal  Decree  of  November  28,  1850,  shall  be  valid  and  shall 
have  all  their  legal  efficacy  for  the  effects  of  Art.  32  of  this  law. 

Nevertheless,  and  with  the  object  of  unifying  the  entries  in 
the  official  Registers,  all  those  interested  parties  to  whom  orig- 
inal certificates  have  been  issued  for  more  than  twenty  years, 
must  make  application  within  the  necessary  term  of  six  months, 
and  the  remainder  must  apply  for  renewal  as  the  term  referred 
to  expires. 

ART.  157.  Renewals  shall  remain  subject  in  all  things  to 
the  provisions  of  this  law. 

ART.  158.  Persons  or  Companies  comprised  in  the  two 
preceding  articles  that  allow  the  terms  indicated  therein  to  lapse 
without  applying  for  the  certificate  for  their  marks,  shall  be 


876  SPAIN 

understood  as  renouncing  them,  and  accordingly  they  may  be 
granted  to  whoever  solicits  them  in  conformity  with  this  law. 

FINAL  PROVISION 

ART.  159.    Such  provisions  as  may  have  been  promulgated 
or  dictated  in  the  matter  of  industrial  property  are  repealed. 
ADDITIONAL  PROVISIONS 

1.  The  Minister  of  Agriculture,  Industry,  Commerce  and 
Public  Works,  is  authorized  to  publish  regulations  or  dictate 
any  provisions  necessary  for  the  fulfillment  of  this  law. 

2.  Within  the  term  of  three  years,  the  Registry  of  Indus- 
trial Property  shall  prepare  a  catalogue  of  all  the   .    .    .  marks 
.    .    . ,  trade  names  and  industrial  recompenses  in  force.    This 
catalogue  shall  be  in  duplicate,  and  one  of  its  copies  shall  be  at 
the  disposition  of  the  public,  for  consultation.    Annually  there 
shall  be  removed  the  papers  containing  the  registrations  that 
may  have  lapsed,  and  there  shall  be  added  those  corresponding 
to  the  new  registrations. 

Therefore : 

We  command  to  all  Courts,  Justices,  Chiefs,  Governors 
and  other  authorities,  civil  as  well  as  military  and  ecclesiastical, 
of  any  class  and  dignity,  that  they  guard  and  cause  others  to 
guard,  comply  with,  and  execute,  the  present  law  in  all  its  parts. 


STRAITS  SETTLEMENTS 

This  colony  has  no  trade  mark  law. 

Merchandise  Marks  Ordinance,  1888,  No.  3,  substantially 
like  Great  Britain  Merchandise  Marks  Ordinance,  which  see. 


SURINAM   (DUTCH  GUIANA) 

The  trade  mark  law  of  Surinam  is  the  same  as  that  of 
Curasao,  which  see. 


SWEDEN 

LAW  OF  JULY  5,  1884,  AS  AMENDED  MARCH  5,  1897, 
JUNE  16, 1905,  AND  AUGUST  7, 1914. 

SECTION  1.  Whoever  here  in  the  kingdom  carries  on  a 
manufacturing  or  artisan's  trade,  farming,  mining,  commerce 
or  other  kind  of  trade,  may,  in  addition  to  possessing  the  right 
of  using  as  a  trade  mark  his  name  or  the  name  of  his  firm  or 
the  name  of  real  estate  owned  by  him,  obtain  by  registration 
in  accordance  with  the  provisions  of  this  law  the  exclusive  right 
of  employing  a  special  trade  mark  to  distinguish  his  goods  from 
others  in  the  public  market.  Such  right  shall  embrace  all  kinds 
of  goods,  when  at  the  registration  it  has  not  been  confined  to 
certain  kinds  of  goods. 

The  trade  mark  shall  be  applied  on  the  article  itself,  or  on 
the  vessel  or  wrapper  (packing)  in  which  the  same  is  kept. 

SEC.  2.  The  register  of  trade  marks  for  the  whole  king- 
dom shall  be  kept  in  Stockholm  by  an  authority  appointed  for 
such  purpose. 

SEC.  3.  Whoever  desires  to  have  a  trade  mark  registered 
shall  deposit  with,  or  send  by  prepaid  letter  to,  the  registering 
authority  an  application  in  writing  containing  a  clear  descrip- 
tion of  the  mark  together  with  full  particulars  concerning  the 
name  or  firm,  profession,  and  postal  address  of  the  applicant, 
as  also,  when  the  right  to  a  trade  mark  shall  include  only  cer- 
tain kinds  of  goods,  an  account  of  the  same. 

The  application  shall  be  accompanied  by: 

1)  An  illustration  of  the  mark  on  strong  paper  in  three 
copies  of  at  the  most  ten  cm.  in  height  and  fifteen  cm.  in  breadth ; 

2)  Two  stamps  (blocks)  of  the  same  size  as  the  illustra- 
tions, suitable  for  printing  the  trade  mark; 

3)  Forty  kroner,  the  amount  of  the  fee  for  the  registration 
and  advertisement  of  the  same. 

The  registering  authority  shall  without  delay  hand  the 

applicant,  or,  if  full  address  has  been  given,  send  by  post,  a 

written  notice  of  the  receipt  of  the  application  and  of  the  day 

and  time  of  day  when  the  same  was  received ;  one  of  the  copies 

of  the  trade  mark  deposited  shall  be  attached  to  the  said  notice. 

SEC.  4.    A  trade  mark  may  not  be  registered : 

1)  if  it  consists  only  of  figures,  letters  or  words  which  are 

not  distinguished  by  such  a  characteristic  form  that  the  mark 

can  be  considered  as  a  figure  mark;  nevertheless  registration 

may  not  be  refused  if  the  mark  consist  of  words  which  can  be 


880  SWEDEN 

considered  as  a  specially  invented  name  for  certain  kinds  of 
goods  stated  in  the  application  in  accordance  with  Sec.  3,  which 
is  not  intended  to  indicate  the  origin,  nature,  object,  quantity 
or  price  of  the  article; 

2)  if  any  other  name  or  firm  than  that  of  the  applicant, 
or  the  name  of  real  estate  of  another,  have  been  included  therein 
without  authority; 

3)  if  it  contain  public  coat  of  arms  or  stamps; 

4)  if  it  contain  representation  that  may  cause  offence; 

5)  if  it  be  altogether  identical  with  a  trade  mark  already 
registered,  or  duly  presented  for  registration,  on  behalf  of 
another,  or  present  such  resemblance  to  a  similar  mark  that, 
notwithstanding  differences  in  certain  parts,  the  marks  in  their 
entirety  can  easily  be  confounded;  nevertheless  registration 
may  not  be  refused  if  the  resemblance  be  owing  to  such  charac- 
teristics as  are  concerned  under  Sec.  7,  or  if  both  the  marks 
concern  different  kinds  of  goods. 

SEC.  5.  If  the  registration  be  refused,  information  with 
regard  to  such  decision,  together  with  the  grounds  therefor, 
shall  be  communicated  to  the  applicant  in  writing  in  the  manner 
prescribed  under  Sec.  3  for  the  cases  considered  therein. 

In  the  event  of  the  applicant  being  dissatisfied  with  the 
decision,  he  may  appeal  to  the  King  before  twelve  o'clock,  noon, 
on  the  sixtieth  day  after  the  day  of  the  decision;  otherwise  he 
forfeits  his  right  to  appeal. 

SEC.  6.  Should  the  registration  not  meet  with  any  objec- 
tion, the  mark  shall  be  entered  in  the  register  and  advertisement 
thereof  inserted  without  delay  in  the  public  newspapers  and  in 
a  registration  journal  published  at  the  expenses  of  the  public. 

SEC.  7.  If  a  trade  mark  which  has  been  registered  on  be- 
half of  some  one  contain  figures,  letters  or  words  that  according 
to  Sec.  4  can  not  alone  of  themselves  be  registered  as  a  trade 
mark,  or  if  it  only  or  in  part  consist  of  such  sign  or  mark  as  is 
generally  used  in  a  certain  trade,  the  registration  does  not  con- 
stitute any  hinderance  for  another  to  use  the  same  characteris- 
tics as  a  trade  mark  or  part  of  a  trade  mark. 

SEC.  8.  The  right  to  a  registered  trade  mark  may  not  be 
transferred  otherwise  than  together  with  the  business  for  which 
it  is  used. 

Should  a  business  be  transferred  to  another  owner,  the 
right  to  a  registered  trade  mark  used  for  the  business  passes 
over  from  the  transferrer  to  the  new  owner,  when  agreement 
is  not  made  that  the  right  to  the  mark  may  be  retained  by  the 
former,  or  that  both  may  use  the  mark  for  different  kinds  of 
goods. 


SWEDEN  881 

SEC.  9.  The  protection  for  a  registered  trade  mark  ceases 
when  application  for  renewal  has  not  been  made,  for  the  first 
time,  within  ten  years  from  the  day  of  registration,  and  subse- 
quently within  ten  years  from  the  last  renewal. 

If  any  one  be  desirous  of  renewing  the  registration,  he  shall 
deposit  or  send  in  as  prescribed  in  Sec.  3,  a  written  application 
in  this  respect,  enclosing  one  copy  of  such  illustration  as  is  there 
prescribed,  together  with  a  registration  fee  of  10  Kroner. 
Should  the  mark  have  been  registered  for  another  than  the  one 
applying  for  renewal,  the  right  of  the  applicant  to  the  mark  shall 
also  be  confirmed. 

The  renewal  shall  immediately  be  entered  in  the  register 
and  a  certificate  thereof  delivered  to  the  applicant  in  a  manner 
similar  to  that  prescribed  under  Sec.  3  concerning  notices  of 
receipt  mentioned  therein. 

If  the  registering  authority  find  that  anything  of  what  has 
here  been  prescribed  has  been  neglected  the  said  authority  shall 
refuse  the  renewal.  With  reference  to  the  communication  of 
the  decision  and  the  appeal  relating  to  the  same,  what  is  pre- 
scribed for  the  corresponding  case  in  Sec.  5  shall  here  be 
applicable. 

SEC.  10.  If  the  King  find  upon  notification  that  a  trade 
mark  in  consequence  of  Sec.  4,  pars.  3  or  4,  should  not  have 
been  registered  the  same  shall  be  removed  from  the  register. 

Should  registration  of  a  trade  mark  which  consists  only 
of  such  a  sign  or  mark  as  is  commonly  used  in  certain  trades, 
have  been  effected,  each  one  carrying  on  such  trade  has  the 
right  of  demanding  the  revocation  of  the  registration.  In  this 
event,  as  also  when  any  one  is  of  opinion  that  the  registration 
of  a  trade  mark  is  detrimental  to  him,  action  concerning  the 
revocation  of  the  registration  may  be  brought  before  the  court. 

SEC.  11.  When  registration  has  been  revoked,  or  protec- 
tion for  a  registered  trade  mark  has  ceased,  or  when  the  one 
entitled  to  the  marks  so  demands,  the  mark  shall  be  removed 
from  the  register  and  advertisement  thereof  inserted  in  the 
newspapers  mentioned  under  Sec.  6. 

If  in  consequence  of  the  decision  of  the  King  a  trade  mark 
be  removed  from  the  register  in  accordance  with  Sec.  10  the 
registering  authority  shall  also  inform  the  one  for  whom  the 
registration  has  been  effected. 

SEC.  12.  Whoever  on  goods  which  are  kept  for  sale  or  on 
vessels  or  wrappers  containing  the  same  places  without  author- 
ity the  name  or  firm  of  another  or  the  name  of  real  estate  of 
another  or  a  trade  mark  which  he  knows  to  be  registered  on 
behalf  of  another,  as  also  whoever  keeps  goods  for  sale,  which 


882  SWEDEN 

to  his  knowledge  are,  according  to  what  is  stated  above,  unlaw- 
fully marked,  shall  be  liable  to  a  fine  of  from  twenty  to  two 
thousand  Kronor  inclusively,  or,  if  a  grave  detriment  has  re- 
sulted from  the  act,  or  if  the  act  be  made  under  specially  aggra- 
vating circumstances,  to  imprisonment  from  one  month  to  two 
years  inclusively,  as  well  as  to  the  payment  of  all  damages. 

At  the  expense  of  the  one  condemned  the  marks  unlawfully 
placed  shall  be  expunged  or  if  the  expunction  cannot  otherwise 
be  effected,  the  goods  or  the  vessels  or  the  wrappers  containing 
the  same  shall  be  destroyed,  providing  they  are  still  in  the  pos- 
session, or  in  any  other  way  at  the  disposal,  of  the  one  con- 
demned. 

Violation  of  this  section  may  not  be  prosecuted  by  the  pub- 
lic prosecutor  unless  the  offence  be  brought  before  the  court  by 
the  injured  party. 

SEC.  13.  What  is  prescribed  in  Sec.  12  shall  apply,  even 
if  the  name  or  firm  of  another  or  the  name  of  real  estate  belong- 
ing to  another  or  a  registered  trade  mark  of  another  has  not 
been  reproduced  unaltered,  providing  the  alterations  are  not 
so  great  that,  in  spite  of  differences  in  certain  parts,  the  names 
or  the  marks  can  as  a  whole  be  easily  confounded. 

SEC.  14.  What  is  prescribed  in  this  law  does  not  involve 
any  alteration  in  the  provisions  of  the  Statutes  in  force  con- 
cerning certain  iron  articles  which  shall  be  provided  with  a 
stamp.  Such  stamp  shall,  for  the  kinds  of  articles  for  which 
it  has  been  approved,  have  the  validity  of  a  trade  mark  accord- 
ing to  this  law,  and  the  stamp  ought  consequently  to  be  adapted 
to  the  provisions  of  the  said  law,  which  in  other  respects  too 
shall  be  observed  as  regards  the  registration  of  the  stamp  and 
the  effect  of  such  registration.  Registration  of  iron  stamps 
shall  be  renewed  by  the  registering  authority  without  any  spe- 
cial application. 

SEC.  15.  The  stamps  mentioned  in  the  preceding  section 
which  have  been  approved  of  in  due  order  and  are  valid  when 
this  law  shall  come  into  force,  shall  without  special  application 
be  entered  in  the  register  of  trade  marks  by  the  registering 
authority  who  shall  also  insert  advertisement  thereof  in  the 
trade  marks  journal. 

If  a  tradesman  lawfully  use  a  special  mark  when  this  law 
shall  come  into  force  in  other  case  than  that  aimed  at  by  the 
foregoing  section,  and  have  within  six  months  from  the  date 
when  the  law  came  into  force,  applied  for  registration  of  the 
mark  in  the  manner  prescribed  under  Sec.  3,  no  one  can  by 
previous  registration  obtain  right  to  the  same  mark,  or  to  a 
mark  which  so  resembles  the  same  that  it  can  easily  be  con- 


SWEDEN  883 

founded  therewith.  Should  two  or  more  tradesmen  have  regis- 
tered in  this  way  trade  marks  for  the  same  kind  of  goods,  which 
present  such  resemblance  to  each  other  as  was  just  mentioned, 
the  one  who  has  first  published  the  mark  as  his  in  accordance 
with  the  Royal  Ordinance  of  June  13,  1862,  has  the  right  of 
priority  to  use  it  for  the  kind  of  goods  for  which  it  was  used 
at  the  time  when  this  law  was  issued,  providing  no  one  of  the 
others  prove  that  it  originally  has  been  a  mark  used  by  him 
which  the  former  has  adopted. 

In  the  cases  mentioned  in  this  section,  the  mark  shall,  if  it 
has  been  used  prior  to  the  issuing  of  the  law,  be  registered 
in  the  form  in  which  it  has  been  used,  independent  of  the  pro- 
visions in  Sec.  4;  and,  notwithstanding  that  the  mark  only  or 
mainly  consists  of  figures,  letters  or  words  which  are  not  dis- 
tinguished by  a  characteristic  form,  no  one  shall  be  entitled 
for  the  kinds  of  goods  for  which  it  was  used  prior  to  the  regis- 
tration, to  get  registered  or  otherwise  to  use  the  same  mark  or 
a  mark  which  so  resembles  the  same  that  it  can  easily  be  con- 
founded therewith.  Such  registration  may  not,  however,  with 
the  exception  of  that  of  iron  stamps  or  shipment  marks  on  tim- 
ber, be  a  hindrance  for  anyone,  to  use  his  initials  or  the  initials 
of  his  firm. 

SEC.  16.  The  king  may  upon  agreement  with  a  foreign 
state  and  under  the  presumption  of  reciprocity,  decree  that 
protection  for  a  trade  mark  according  to  this  law  may  be 
granted  also  to  the  one  who  carries  on  such  trade  outside  the 
Kingdom  as  is  mentioned  under  Sec.  1 ;  and  also  to  an  association 
established  without  the  country,  in  order  to  safeguard  the  inter- 
ests of  merchants,  although  the  association  does  not  exploit  the 
industry  hereinbefore  mentioned.  The  provisions  of  the  law 
shall  be,  in  consequence,  applicable  in  this  case,  through  the 
observance  of  the  special  rules,  following,  in  whatever  concerns 
the  deposit  of  marks: 

1)  The  application  for  registration  shall  be  accompanied 
by  a  certificate  that  the  applicant  has  fulfilled  the  conditions 
required  for  the  protection  of  the  trade  mark  in  the  foreign 
state ; 

2)  The  one  for  whom  the  registration  shall  come  into  force 
shall  have  an  attorney  residing  within  the  kingdom  who  here 
may  answer  on  his  behalf  in  all  cases  concerning  the  trade 
mark;  and  consequently  he  shall,  when  the  application  is  made, 
and  subsequently  upon  changes  of  attorneys,  state  the  name 
and  address  of  the  attorney  at  the  risk  that,  if  this  said  pro- 
vision should  not  be  observed,  the  judge  may  in  such  cases  upon 
notification  appoint  with  legal  force  such  an  attorney; 


884  SWEDEN 

3)  The  trade  mark  shall  not  be  protected  to  a  greater  extent 
or  for  a  longer  period  than  in  the  foreign  state. 

With  reference  to  a  trade  mark  registered  in  a  state  which 
makes  corresponding  concessions  for  Swedish  trade  marks,  the 
King  may,  besides,  prescribe  as  follows: 

4)  The  trade  mark  may,  providing  it  be  not  contrary  to 
morality  or  public  order,  be  registered  in  the  form  in  which  it 
is  protected  in  the  foreign  state; 

5)  If  any  one  has  applied  for  the  registration  of  a  trade 
mark  here  in  the  kingdom  before  the  expiration  of  a  certain 
time,  which  can  be  determined  to  be  a  period  not  exceeding  four 
months  from  the  date  when  he  made  application  for  registration 
of  the  same  trade  mark  in  the  foreign  state,  or  not  exceeding 
three  months  from  the  date  when  the  proper  authorities  there 
published  notice  that  such  registration  had  been  granted,  then 
the  application  made  here  in  the  kingdom  may  be  regarded  in 
relation  to  other  applications  as  if  it  were  made  simultaneously 
with  the  application  in  the  foreign  state; 

6)  If  the  registration  be  refused  on  the  provisions  of  Sec. 
4,  par.  5,  and  the  applicant,  after  having  taken  proceedings 
against  the  one  holding  the  right  of  using  the  mark  previously 
applied  for  or  registered,  bring  proof  that  the  said  mark  is 
a  mark  originally  used  by  the  applicant,  which  another  has 
adopted,  the  court  may  declare  the  applicant  entitled  to  obtain 
registration  with  the  exclusive  right  of  using  the  mark  for  the 
kind  of  goods  for  which  he  used  the  mark  at  the  time  when  the 
mutual  protection  came  into  force.    Proceedings  in  this  respect 
may  not  be  taken  later  than  six  months  from  the  aforesaid  time ; 

7)  A  trade  mark  which  has  been  duly  registered  in  the 
foreign  state  before  the  mutual  protection  came  into  force,  and 
which  only  or  mainly  consists  of  figures,  letters  or  words  which 
according  to  Sec.  4  can  not  alone  be  registered  as  a  trade  mark, 
shall,  when  it  is  protected  in  the  foreign  state,  enjoy  the  special 
protection  here  in  the  kingdom,  subsequent  to  registration,  that 
others  may  not  use  the  same  figures,  letters  or  words  as  a  trade 
mark  for  the  same  kind  of  goods,  unless  they  have  used  them 
before  the  mutual  protection  came  into  force.    The  registration 
of  such  trade  marks  with  the  exception  of  iron  stamps  and 
shipment  marks  on  timbers,  may  not,  however,  be  a  hindrance 
for  any  one  to  use  the  initials  of  his  name  or  his  firm  as  a  trade 
mark. 

SEC.  17.  More  detailed  provisions  concerning  the  Register 
of  Trade  Marks,  the  publishing  of  the  Trade  Marks  Journal, 
and  the  time  and  manner  for  the  publishing  of  the  Ordinances 
mentioned  in  this  law,  will  be  issued  by  the  King. 


SWEDEN  885 

SEC.  18.  A  conflict  concerning  a  trade  mark  shall  be 
brought  before  the  court,  within  the  district  of  which  the  de- 
fendant is  resident,  or,  when  the  question  concerns  a  mark  of  a 
foreigner,  to  the  Law  Court  of  Stockholm. 

SEC.  19.  Fines  imposed  in  accordance  with  this  law  go  to 
the  Crown;  in  the  absence  of  means  to  fully  cover  the  fines, 
other  penalty  shall  be  substituted,  in  accordance  with  the  Com- 
mon Penal  Code. 

SEC.  20.     This  law  shall  come  into  force  on  January  1, 1885. 

All  persons  concerned,  etc. 


SWITZERLAND 

LAW  OF  SEPTEMBER  26,  1890 

I.    MARKS  OF  MANUFACTURE  AND  OF  COMMERCE 
ARTICLE  1.    There  shall  be  considered  as  marks  of  manu- 
facture and  of  commerce: 

1.  Commercial  names  ; 

2.  Signs  applied  to  industrial  and  agricultural  products  or 
merchandise  or  upon  their  containers  for  the  purpose  of  distin- 
guishing them  or  of  evidencing  their  origin. 

ART.  2.  Swiss  commercial  names  employed  as  marks  shall 
be  fully  protected  by  law  on  the  fulfillment  of  the  formalities 
prescribed  for  the  recognition  of  these  names  (Code  Federal 
des  Obligations,  Art.  859  and  ff.*). 

ART.  3.  Marks  defined  in  Art.  1,  No.  2,  shall  be  subject  to 
the  dispositions  of  Articles  4  to  11  following. 

Public  arms  and  all  other  signs  susceptible  of  being  con- 
sidered as  the  property  of  a  State  or  public  property,  that  figure 
in  the  marks  of  private  individuals,  may  not  be  the  subject  mat- 
ter of  legal  protection. 

It  is  prohibited  to  have  appear  in  a  mark  of  manufacture 
any  indication  of  a  nature  to  offend  good  morals. 

ART.  4.  The  use  of  a  mark  cannot  be  claimed  at  law  until 
after  the  fulfillment  of  the  formalities  of  deposit  and  registra- 
tion prescribed  in  Arts.  12  to  15  following. 

ART.  5.  Until  proof  to  the  contrary  there  shall  be  pre- 
sumption that  the  first  depositor  of  a  mark  is  also  the  real 
owner  thereof. 

ART.  6.  A  mark  whose  deposit  is  effected  must  be  distin- 
guished in  its  essential  characteristics  from  those  that  are 
already  found  registered. 

The  reproduction  of  certain  figures  of  a  deposited  mark 
does  not  exclude  the  new  mark  from  the  rights  resulting  from 
registration,  on  condition  that,  in  its  ensemble,  it  differs  there- 
from sufficiently  to  not  easily  give  occasion  to  confusion. 

The  disposition  of  the  first  paragraph  of  the  present  article 
shall  not  be  applied  to  marks  intended  for  products  or  mer- 
chandise of  a  nature  totally  different  from  those  that  the  depos- 
ited mark  concerns. 

ART.  7.  There  shall  be  authorized  to  have  registered  their 
marks : 


*  The  Code  Federal  des  Obligations,  Sees.  859-876,  refers  to  commercial  matricu- 
lation. 


SWITZERLAND  887 

1)  Industrials  or  other  producers  having  the  seat  of  their 
production  in  Switzerland  and  merchants  who  there  possess  a 
regularly  established  commercial  house; 

2)  Industrials,   producers    and   merchants   established   in 
States  that  accord  reciprocity  of  treatment  to  the  Swiss,  pro- 
vided that  they  furnish  proof  that  their  marks  or  commercial 
names  are  protected  at  the  place  of  their  establishment; 

3)  Associations  of  industrials,  of  producers  and  of  mer- 
chants that  satisfy  the  conditions  indicated  in  Nos.  1  and  2  above 
and  who  enjoy  civil  capacity,  as  well  as  public  administration. 

ART.  8.  The  duration  of  protection  is  fixed  at  twenty 
years ;  but  the  owner  may  assure  himself  the  continuation  there- 
of for  a  new  period  or  like  duration  by  renewing  the  deposit 
during  the  course  of  the  last  year  and  by  paying  a  fee  of  twenty 
francs. 

The  Federal  Office  of  Intellectual  Property  shall  notify  the 
owner  of  the  early  expiration  of  the  term  without,  however, 
being  obliged  so  to  do.  The  mark  shall  be  cancelled  if  the 
renewal  is  not  petitioned  within  six  months. 

ART.  9.  He  who  has  not  made  use  of  his  mark  for  three 
consecutive  years  shall  be  deprived  of  protection. 

ART.  10.  The  cancelled  mark  may  not  be  validly  deposited 
by  a  third  party  for  the  same  products  or  merchandise  until 
after  the  expiration  of  five  years  counting  from  the  cancellation. 

ART.  11.  The  mark  may  be  assigned  only  with  the  enter- 
prise the  products  of  which  it  serves  to  distinguish. 

As  regards  third  parties  the  assignment  produces  its  effects 
counting  from  its  publication  only.  (Art.  16.) 

ART.  12.  The  deposit  of  a  mark  shall  be  effected  at  the 
Federal  Office  of  Intellectual  Property. 

The  applicant  shall  include  with  his  declaration,  which  must 
be  signed  and  indicate  his  adHress  and  his  profession: 

a)  The  mark  or  its  exact  reproduction,  in  duplicate,  with 
the  designation  of  the  goods  or  merchandise  for  which  it  is 
intended  and  casual  observations; 

b)  A  cliche  (electrotype)  of  the  mark  for  typographic  re- 
production ; 

c)  The  fixed  registration  fee  of  twenty  francs. 

The  deposit  and  the  registration,  in  a  single  language,  of 
a  mark,  accompanied  by  a  text  in  divers  languages,  suffices  to 
assure  protection,  provided  that  the  general  impression  pro- 
duced by  the  mark  be  not  altered  through  the  employment  of 
different  texts. 

ART.  13.  The  Office  shall  keep  a  register  of  regularly  de- 
posited marks. 


888  SWITZERLAND 

Registration  takes  place  on  the  responsibility  and  at  the 
risk  of  the  applicant.  However,  if  the  Office  establishes  that  a 
mark  is  not  new  in  its  essential  characteristics,  it  shall  so  inform 
the  applicant  confidentially,  which  latter  may  maintain,  modify 
or  abandon  his  application. 

ART.  14.  Under  reservation  of  recourse  to  the  superior 
administrative  authority,  the  Office  must  refuse  registration: 

1)  When  the  conditions  provided  for  in  Arts.  7  and  12  are 
lacking ; 

2)  When  the  mark  comprises,  as  an  essential  element,  pub- 
lic arms  or  any  other  figure  that  must  be  considered  as  public 
property,  or  when  it  contains  indications  of  a  nature  to  offend 
good  morals ;  the  competent  Federal  Department  may  on  its  own 
initiative  order  the  cancellation  of  such  a  mark  registered  by 
mistake ; 

3)  When  several  persons  concurrently  apply  for  the  regis- 
tration of  the  same  mark,  up  to  the  moment  at  which  one  of 
them  shall  produce  a  renunciation,  duly  certified,  from  his  appli- 
cant rivals  or  a  decision  given  res  adjudicata; 

4)  When  the  mark  bears  an  evidently  false  indication  of 
origin  or  a  fictitious,  imitation,  or  counterfeit,  commercial  title, 
or  indication  of  distinctions  of  merit  the  legitimacy  whereof 
the  applicant  does  not  establish. 

ART.  15.  The  Office  shall  give  official  acknowledgment  to 
the  applicant  for  registration  or  renewal  by  returning  to  him 
a  duplicate  of  the  copy  deposited  (Art.  12,  letter  a),  upon  which 
it  shall  endorse  the  day  and  hour  of  the  deposit  and  of  the 
registration. 

Within  fourteen  days  from  registration  the  mark  shall  be 
published,  under  the  supervision  of  the  Office  and  without  costs, 
in  the  official  journal  of  commerce  or  such  other  federal  sheet 
designated  for  this  purpose. 

ART.  16.  The  assignment  of  the  mark  (Art.  11)  shall  be 
noted  in  the  Register,  on  the  production  of  a  legalized  instru- 
ment. 

It  shall  be  made  public  in  the  same  manner  as  the  regis- 
tration. 

The  annotation  of  assignment  shall  be  subject  to  a  fee  of 
twenty  francs. 

Modifications  made  in  commercial  names  that  form  an 
integral  part  of  marks  deposited  shall  be  noted  in  the  Register, 
on  receipt  of  notice  that  must  be  made  thereof  by  those  inter- 
ested, and  published  in  the  official  organ,  with  indication  of  the 
number  of  the  mark  to  which  the  modification  applies.  There 
shall  be  collected  for  this  procedure  a  fee  of  ten  francs. 


SWITZERLAND  889 

ART.  17.  Any  person  has  the  right  to  ask  information 
from  the  Office  or  for  extracts  from  the  Register,  as  well  also 
to  take  cognizance  of  applications  for  deposit  and  of  the  accom- 
panying papers.  The  Office  may,  however,  deliver  the  same  out 
of  its  custody  only  on  judicial  order. 

The  Federal  Council  shall  fix  a  moderate  fee  for  such  com- 
munications and  information. 

II.    INDICATIONS  OF  ORIGIN 

ART.  18.  An  indication  of  origin  consists  in  the  name  of 
the  city,  of  the  locality,  of  the  region,  or  of  the  country,  that 
gives  its  renown  to  a  product. 

The  use  of  this  name  belongs  to  each  manufacturer  or  pro- 
ducer of  such  city,  locality,  region,  or  country,  as  also  to  the 
purchaser  of  these  goods. 

It  is  prohibited  to  supply  a  product  with  an  indication  of 
origin  that  is  not  real. 

ART.  19.  Persons  inhabiting  a  place  reputed  for  the  manu- 
facture or  the  production  of  certain  merchandise,  that  trade  in 
similar  goods  of  other  origin,  are  bound  to  take  necessary  meas- 
ures to  the  end  that  the  affixing  of  their  mark  or  commercial 
name  may  not  induce  the  public  to  error  as  to  the  origin  of  such 
goods. 

ART.  20.  There  will  be  no  false  indication  of  origin  in 
the  sense  of  the  present  law: 

1)  When  the  name  of  a  locality  has  been  affixed  to  a  product 
manufactured  elsewhere,  but  for  the  account  of  a  manufacturer 
having  his  principal  industrial  establishment  in  the  locality 
indicated  as  the  place  of  manufacture,  provided,  however,  that 
the  indication  of  origin  be  accompanied  by  the  commercial  name 
of  the  manufacturer  or,  in  default  of  sufficient  space,  by  his 
deposited  trade  mark ; 

2)  When  it  is  a  question  of  the  denomination  of  a  product 
by  a  name  of  place  or  of  country,  that,  become  generic,  indi- 
cates, in  commercial  language,  the  nature  and  not  the  origin 
of  the  product. 

III.     MENTIONS  OF  INDUSTRIAL  RECOMPENSES 
ART.  21.    The  right  of  providing  a  product  or  its  wrapper 
with  the  mention  of  medals,  diplomas,  recompenses  and  dis- 
tinctions of  honor,  of  whatever  character,  awarded  in  exposi- 
tions or  competitions,  in  Switzerland  or  abroad,  shall  belong 
exclusively  to  persons  or  companies  that  have  received  them. 
The  same  shall  hold  for  mentions,  recompenses,  distinctions 
or  awards  accorded  by  public  administrations,  learned  bodies 
or  scientific  societies. 

ART.  22.    He  who  shall  have  made  use  of  the  distinctions 


890  SWITZERLAND 

mentioned  in  the  preceding  article  must  indicate  the  date  and 
nature  thereof,  as  well  as  the  expositions  or  competitions  in 
which  he  has  obtained  them.  If  it  is  a  question  of  a  distinction 
received  in  a  collective  exposition,  he  must  make  mention 
thereof. 

ART.  23.  It  is  prohibited  to  affix  mentions  of  industrial 
recompenses  upon  products  bearing  no  relation  to  those  that 
have  obtained  the  distinction. 

IV.   PENAL  PROVISIONS 

ART.  24.  He  shall  be  prosecuted  civilly  or  criminally,  in 
accordance  with  the  following  provisions: 

a)  Who  shall  have  counterfeited  the  mark  of  another  or 
shall  have  imitated  it  in  such  way  as  to  induce  the  public  to 
error ; 

b)  Who  shall  have  usurped  the  mark  of  another  for  his 
own  product  or  merchandise ; 

c)  Who  shall  have  sold,  placed  on  sale  or  in  circulation, 
goods  or  merchandise  bearing  a  mark  that  he  knew  to  be  coun- 
terfeit, an  imitation  or  improperly  affixed; 

d)  Who  shall  have  knowingly  co-operated  in  the  above 
infractions  or  shall  knowingly  have  aided  or  facilitated  the  exe- 
cution thereof; 

e)  Who  shall  refuse  to  declare  the  origin  of  goods  or  mer- 
chandise in  his  possession  bearing  counterfeit,  imitation  or 
improperly  affixed  marks ; 

f)  Who  shall  have  contravened  the  dispositions  of  Arts. 
18,  third  paragraph,  19,  20,  number  1,  21,  and  23  of  the  present 
law. 

ART.  25.  The  above  enumerated  infractions  shall  be  pun- 
ishable with  a  fine  of  from  30  to  2000  francs,  or  by  imprisonment 
of  from  three  days  to  one  year,  or  both. 

The  penalty  may  be  increased  to  double  in  case  of  repe 
tition. 

These  penalties  shall  not  be  applicable  when  the  contra- 
vention shall  have  been  committed  through  simple  mistake, 
imprudence  or  negligence.  Civil  indemnity  shall  remain  re- 
served. 

ART.  26.  Whoever  shall  have  improperly  inscribed  upon 
his  commercial  marks  or  papers  a  mention  tending  to  make  it 
appear  that  his  mark  has  been  registered; 

Whoever,  upon  his  signs,  announcements,  prospectuses,  in- 
voices, letters  or  commercial  papers,  shall  make  use  improperly 
of  indications  of  origin  or  of  mentions  of  industrial  recom- 
penses, or  shall  omit  the  indications  prescribed  in  Art.  22 ; 

Shall  be  punished,  ex  officio,  or  upon  complaint,  by  a  fine 


SWITZERLAND  891 

of  from  30  to  500  francs  or  by  imprisonment  of  from  3  days 
to  3  months. 

The  penalty  may  be  increased  to  not  more  than  double  in 
case  of  repetition. 

ART.  27.     Civil  or  criminal  actions  may  be  brought : 

1)  In  whatever  concerns  marks: 

by  the  purchaser  deceived  or  the  owner  of  the  mark ; 

2)  In  whatever  concerns  indication  of  origin: 

a)  by  any  manufacturer,  producer  or  dealer  injured  in  his 
interests  and  established  in  the  city,  locality,  region  or  country, 
falsely  indicated;  by  a  collectivity,  enjoying  civil  capacity,  by 
its  manufacturers,  producers  or  dealers; 

b)  by  any  purchaser  deceived  by  means  of  a  false  indica- 
tion of  origin; 

3)  In  whatever  concerns  industrial  recompenses: 

a)  by  any  manufacturer,  producer  or  dealer,  carrying  on 
an  industry  or  trade  in  products  similar  to  that  which  has  been 
falsely  provided  with  an  illegal  mention. 

ART.  28.  Criminal  action  shall  be  brought  either  at  the 
domicile  of  the  offender,  or  at  the  place  in  which  the  offense  has 
been  committed.  Criminal  prosecutions  may  not  be  cumulative 
for  the  same  offense. 

The  Cantonal  Government  shall  be  bound  to  give  course, 
without  expense  to  the  Confederation,  to  complaints  that  shall 
be  addressed  to  it  by  the  Federal  Council. 

Civil  or  criminal  prosecutions  may  not  be  lodged  for  acts 
committed  prior  to  the  registration  of  the  mark. 

Action  shall  be  brought  within  two  years,  counting  from 
the  last  act  of  contravention. 

ART.  29.  The  Cantons  shall  designate  the  Tribunal  charged 
with  judging,  in  single  instance,  civil  cases  to  which  the  appli- 
cation of  the  present  law  gives  occasion. 

Judgments  may  be  referred  to  the  Federal  Tribunal,  what- 
ever be  the  amount  in  litigation. 

ART.  30.  Action  against  the  depositor  of  a  mark  domiciled 
outside  of  Switzerland  may  be  brought  before  the  Tribunal  in 
the  jurisdiction  in  which  is  located  the  seat  of  the  Federal  Office, 
unless  the  depositor  shall  have  made  election  of  domicile  in 
Switzerland  and  shall  have  given  notice  thereof  to  the  Office. 

ART.  31.  The  Tribunal  may  order  the  necessary  conser- 
vation measures,  in  particular  the  sequestration  of  the  instru- 
ments and  utensils  that  have  served  for  the  infringement,  as 
well  as  of  the  products  and  merchandise  upon  which  the  mark 
in  litigation  is  found  affixed. 

ART.  32.    It  may  likewise  order  the  confiscation  of  the 


892  SWITZERLAND 

object  seized,  in  order  to  assess  the  value  thereof  as  to  damages 
and  injuries  and  indemnities,  as  also  the  publication  of  the  judg- 
ment in  one  or  several  journals  at  the  cost  of  the  condemned 
party. 

It  shall  order,  even  in  case  of  acquittal,  the  destruction  of 
the  illicit  marks  and,  the  case  arising,  the  goods,  wrappers  or 
containers,  provided  with  these  marks,  as  well  as  the  instru- 
ments and  utensils  that  have  served  for  the  infringement. 

ART.  33.  The  proceeds  of  the  indemnities  shall  be  placed 
in  the  Cantonal  Treasury. 

The  judgment  shall  announce  that,  in  default  of  payment, 
the  indemnity  shall  be,  legally,  changed  to  imprisonment,  at 
the  rate  of  one  day  for  each  five  francs  of  indemnity. 

ART.  34.  Proceedings  shall  be  taken  by  the  Office,  on  pre- 
sentation of  the  judgment  passed  into  force  as  a  res  adjudicata 
for  the  cancellation  of  marks  unduly  registered  or  avoided. 

Cancellation  shall  be  made  public  in  conformity  with  Art. 
16,  second  paragraph. 

V.   FINAL  PROVISIONS 

ART.  35.  The  Federal  Council  may  guarantee  provisional 
protection  of  two  years  at  the  most  as  to  marks  applied  to  prod- 
ucts or  merchandise  shown  in  Switzerland  in  industrial  or  agri- 
cultural expositions  and  emanating  from  States  with  which 
there  exists  no  convention  on  the  subject. 

ART.  36.  The  dispositions  of  the  present  law  concerning 
indications  of  origin  and  mentions  of  industrial  recompenses 
shall  not  be  applicable,  even  when  their  marks  would  be  pro- 
tected in  accordance  with  Art.  7,  to  the  profit  of  persons  not 
domiciled  in  Switzerland,  being  subjects  of  States  that  do  not 
grant  reciprocity  of  treatment  in  this  matter. 

ART.  37.  The  Federal  Council  is  charged  with  the  issuance 
of  rules  and  ordinances  necessary  for  the  execution  of  the  pres- 
ent law. 

ART.  38.  The  present  law  abrogates  the  Federal  Law  of 
December  19, 1879,  concerning  the  protection  of  marks  of  manu- 
facture and  of  commerce. 

ART.  39.  The  Federal  Council  is  charged,  in  conformity 
with  the  provisions  of  the  law  of  June  17,  1874,  concerning  the 
popular  vote  on  Federal  laws  and  orders,  with  publishing  the 
present  law  and  fixing  the  time  at  which  it  shall  become  effective. 


SYRIA  AND  LEBANON 

LAW  [NO.  865]  OF  MAY  27,  1921 

General  Gouraud,  High  Commissioner  of  the  French  Re- 
public in  Syria  and  Lebanon. 

Having  seen  the  decrees  of  October  8,  1919,  and  November 
23,  1920; 

Having  seen  the  Ottoman  law  of  May  11,  1888  (23  Chaban 
1305),  regulating  the  protection  of  marks  of  manufacture  and 
of  commerce; 

Having  seen  Order  No.  769  of  March  19,  1921,  assuring  to 
exhibitors  during  the  term  of  the  Fair  at  Beirut  temporary 
protection  of  their  rights  of  industrial  property; 

Considering  that  it  is  indispensable  to  guarantee  in  a  per- 
manent manner  to  manufacturers  and  merchants  the  full  exer- 
cise of  their  rights  of  ownership  in  the  marks  of  manufacture 
or  of  commerce  adopted  by  them  for  the  qualification  of  their 
products  or  the  indication  of  their  place  of  origin  or  of  pro- 
duction ; 

At  the  instance  of  the  Chief  of  the  Economic  Services  of 
the  High  Commissariat,  and  after  the  assent  of  the  Legislative 
Counselor,  of  the  Financial  Counselor,  and  of  the  Judicial 
Counselor, 

Orders : 

ARTICLE  1.  There  shall  be  considered  as  marks  of  manu- 
facture and  of  commerce :  names,  denominations,  seals,  stamps, 
emblems,  letters,  ciphers,  wrappers,  dressings  (habillage),  or 
other  distinctive  signs;  that  is  to  say,  any  emblem  or  stamp 
serving  to  distinguish  the  locality  or  the  factory  from  which 
originate  the  articles  or  products,  the  names  and  denominations 
of  factories,  of  manufacturers  and  of  those  that  trade  in  these 
products. 

ART.  2.  The  employment  or  the  adoption  of  marks  of 
manufacture  or  of  commerce  is  optional.  However,  in  case  of 
need,  they  shall  become  obligatory  for  certain  products,  follow- 
ing an  order  from  the  authorities.  It  is  formally  understood 
that  emblems  adopted  as  marks  must  not  be  emblems  seditious 
or  contrary  to  public  morality  and  to  good  custom.  Emblems 
of  this  nature,  accordingly,  may  not  be  adopted  as  marks. 

ART.  3.  No  person  may  claim  the  exclusive  ownership  of 
a  mark  and,  in  consequence,  bring  action  against  counterfeiters 
unless  he  has  deposited  two  specimens  of  the  design  of  this 


894  SYRIA  AND  LEBANON 

mark  at  the  Office  for  the  Protection  of  Industrial  and  Artistic 
Property  (0.  P.  P.  I.  A.)  and  with  the  office  of  the  Clerk  of  the 
Court  of  Appeals. 

The  Commercial  Office  at  Beirut  under  the  High  Commis- 
sariat shall  fulfill  the  official  functions  for  the  protection  of  in- 
dustrial and  artistic  property,  in  Syria  and  in  Lebanon. 

ART.  4.  A  mark  deposited  officially  in  conformity  with  the 
terms  of  Art.  3,  above,  shall  be  effective  only  for  fifteen  years. 

However,  the  right  of  exclusive  ownership  of  a  mark  may 
be  renewed  by  means  of  a  new  deposit  with  specimens  or  with 
a  design  of  the  mark  every  fifteen  years. 

The  right  of  ownership  of  a  mark  may  be  assigned  by  its 
owner  to  third  parties  with  the  authorization  of  the  High  Com- 
missioner, after  advice  by  the  Chief  of  Economic  Services  of 
the  High  Commissariat;  likewise,  in  case  of  the  decease  of  the 
owner,  the  right  shall  devolve  upon  his  heirs. 

ART.  5.  There  shall  be  collected,  by  way  of  miscellaneous 
receipts  of  the  General  Budget  of  Syria  and  Lebanon,  a  fee  of 
from  five  to  ten  pounds,  Syrian,  for  the  preparation  of  the  cer- 
tificate to  be  sent  to  the  owner,  showing  the  deposit  of  the  speci- 
mens of  the  mark. 

The  amount  of  this  fee  shall  be  fixed  as  follows: 

1)  Registration  of  a  mark  composed  of  a  single  emblem: 
a  maximum  of  ten  pounds,  Syrian,  shall  be  collected; 

2)  Registration  of  a  mark  composed  of  several  emblems: 

a)  If  a  single  certificate  is  demanded  by  the  depositor  for 
the  total  of  the  specimens  deposited: 

First  specimen :  fee  collected,  ten  pounds,  Syrian ; 
Second  specimen :  fee  collected,  eight  pounds,  Syrian ; 
Third  specimen:  fee  collected,  five  pounds,  Syrian; 
Additional  specimens :  fee  collected,  five  pounds,  Syrian  ; 

b)  If  a  special  certificate  is  demanded  by  the  depositor  for 
each  of  the  specimens  deposited; 

The  maximum  fee  of  ten  pounds,  Syrian,  shall  be  collected 
for  each  specimen  deposited. 

The  payment  of  these  sums  shall  be  effected  at  the  Cashier's 
Office  of  the  Treasurer-General  of  the  High  Commissariat  at 
Beirut  or  at  those  of  the  responsible  stewards  with  the  local 
governments,  upon  the  production  of  a  form  of  receipt  drawn 
up  by  the  Office  for  the  Protection  of  Industrial  and  Artistic 
Property,  and  vised  by  the  Directorate  of  Finances  of  the  High 
Commissariat.  The  certificate  of  deposit  shall  be  delivered  only 
upon  presentation  of  the  receipt  delivered  by  the  responsible 
party. 


SYRIA  AND  LEBANON  895 

ART.  6.  Foreigners  that  exercise  in  Syria  and  Lebanon  an 
industry  or  business  shall  likewise  have  the  right  to  adopt  a 
mark  for  the  products  of  their  establishments  and  the  articles 
of  their  commerce,  on  condition  of  subjecting  themselves  to  the 
terms  of  the  present  regulation;  in  this  case  they  shall  enjoy 
the  advantages  and  guarantees  assured  by  the  said  regulation. 

Actions  relative  to  marks  shall  be  governed  by  the  laws 
and  practices  of  ordinary  procedure. 

ART.  7.  Every  person  that  shall  desire  to  deposit  his  mark, 
such  as  this  is  provided  for  in  Art.  3,  shall  have  to  present  two 
specimens  thereof  if  this  mark  is  amxable  by  marking  impress 
or  stamp.  In  case  the  mark  shall  consist  of  a  different  object, 
two  typographical  designs  exactly  in  conformity  with  the  orig- 
inal and  accompanied  by  all  necessary  indications  and  descrip- 
tions shall  be  deposited  in  the  manner  above  indicated  with  the 
Office  for  the  Protection  of  Industrial  and  Artistic  Property. 
These  specimens  or  designs  must  bear  the  seal  or  the  signature 
of  the  depositor. 

The  depositor  may  be  represented  by  an  attorney  invested 
with  a  power  of  attorney  in  good  and  due  form.  Mention  of 
the  power  of  attorney  shall  be  endorsed  upon  the  act  of  deposit. 
This  attorney  shall,  as  is  above  explained,  affix  his  signature  or 
his  seal  to  the  specimens  or  designs  deposited. 

ART.  8.  Under  responsibility  of  the  Director  of  the  Office 
for  the  Protection  of  Industrial  and  Artistic  Property  the  typo- 
graphical specimens  or  designs  of  the  mark  shall  be  pasted 
upon  a  sheet  of  the  Register  kept  for  this  purpose.  There  shall 
likewise  be  entered  in  this  Register : 

1)  The  date  of  the  deposit; 

2)  The  name  of  the  owner  of  the  mark; 

3)  The  calling  and  the  domicile  of  the  owner  of  the  mark; 

4)  Indication  of  the  nature  of  the  product  or  of  the  article 
for  which  the  mark  is  intended ; 

5)  The  serial  number;  and 

6)  The  names,  profession  and  domicile  of  the  attorney  or 
proxy  in  case  the  owner  shall  be  represented,  as  well  as  the 
dates,  places  of  execution,  registration,  etc.,  of  the  power  of 
attorney  authorizing  this  attorney  or  proxy. 

These  mentions  shall  be  likewise  signed  and  sealed  by  the 
owner  of  the  mark  or  his  attorney. 

The  second  specimen  preserved  at  the  Office  of  the  Clerk 
of  the  Court  of  Appeals  shall  be  registered  and  signed  in  ac- 
cordance with  the  same  formalities. 

ART.  9.  The  formalities  provided  for  in  the  preceding  arti- 
cles once  fulfilled,  the  Director  of  the  Office  for  the  Protection 


896  SYRIA  AND  LEBANON 

of  Industrial  and  Artistic  Property  shall  deliver  a  provisional 
certificate  of  deposit. 

ART.  10.  Within  a  term  of  twenty  days,  dating  from  the 
issuance  of  the  provisional  certificate,  the  definitive  certificate 
of  deposit,  prepared  and  signed  by  the  Director  of  the  Office  for 
the  Protection  of  Industrial  and  Artistic  Property  shall  be 
transmitted  to  the  Chief  Clerk  of  the  Court  of  Appeals,  provided 
with  the  vise  of  this  latter  and  returned  to  the  Office  for  the 
Protection  of  Industrial  and  Artistic  Property,  which  shall 
deliver  it  to  the  party  interested — owner  or  attorney — on  de- 
livery of  the  provisional  certificate. 

ART.  11.  Outside  of  cases  in  which  competence  is  deter- 
mined by  the  Capitular  Laws,  civil  actions  relative  to  marks 
shall  be  lodged  before  the  tribunals  of  first  instance  and  shall 
there  be  adjudged  as  summary  matters.  Correctional  actions 
relative  thereto  shall  likewise  be  adjudged  by  the  said  tribunals. 

If,  in  case  of  action  brought  correctionally,  the  accused  shall 
raise  questions  relative  to  the  ownership  of  the  mark,  the  cor- 
rectional section  of  the  tribunal  hearing  the  principal  action 
shall  decide  likewise  as  to  the  exception. 

ART.  12.  The  owner  of  a  mark  may  institute  proceedings 
through  the  tribunal  as  to  the  detailed  description  of  the  nature, 
of  the  kind  and  of  the  quantity  of  goods  and  articles  that  he 
claims  to  have  been  marked  to  his  prejudice  and  in  contraven- 
tion of  the  disposition  of  the  present  regulation;  he  may  like- 
wise, should  there  be  occasion,  have  them  seized  by  virtue  of 
an  order  of  the  tribunal. 

The  order  shall  be  issued  on  demand  of  the  petitioner  and 
on  presentation,  by  him,  of  the  certificate  of  deposit  evidencing 
the  deposit  of  his  mark.  The  tribunal  shall  name,  should  there 
be  occasion,  an  expert  to  aid  the  judicial  personnel  appointed 
for  this  purpose. 

When  the  seizure  of  goods  is  petitioned,  the  tribunal  may, 
before  ordering  this  seizure,  require  from  the  owner  of  the  mark 
a  bond,  if  it  so  deems  necessary. 

There  shall  be  communicated  to  the  holder  of  the  goods  and 
articles  described  and  seized  a  copy  of  the  order  of  the  tribunal 
and  of  the  act  evidencing  the  deposit  of  the  bond,  if  it  has  been 
required.  In  case  of  defect  in  the  above  indicated  formalities, 
that  is  to  say,  in  the  case  in  which  the  said  copy  shall  not  be 
communicated,  the  formalities  fulfilled  shall  be  considered  as 
null  and  void,  and  the  contravening  official  shall  be  amenable 
to  damages  and  injuries. 

ART.  13.  In  default  by  the  petitioner  of  bringing  action 
within  the  term  of  fifteen  days,  by  adding  to  this  term  one  day 


SYRIA  AND  LEBANON  897 

for  each  six  hours  of  distance  between  the  locality  in  which  are 
found  the  goods  inventoried  and  seized  and  the  domicile  of  the 
defendant,  the  description  or  the  seizure  of  the  goods  shall  be 
null  and  void,  without,  however,  entailing  prejudice  to  an  action 
for  damages  and  injuries  which  may  be  brought. 

ART.  14.  They  shall  be  punished  by  a  fine  of  from  five 
Syrian  pounds  to  one  hundred  Syrian  pounds,  or  by  imprison- 
ment of  from  one  month  to  six  months,  or  by  the  two  penalties 
at  the  same  time,  in  accordance  with  the  degree  of  gravity  of 
the  crime: 

1)  "Who  have  counterfeited  a  mark  whose  model  or  fac- 
simile is  found  deposited  in  accordance  with  the  present  regu- 
lations, or  who  have  made  use  of  a  counterfeit  mark; 

2)  Who  have  fraudulently  affixed  to  their  products  or  their 
articles  of  commerce  a  mark  belonging  to  another; 

3)  Who  have  knowingly  sold  or  placed  on  sale  one  or  several 
kinds  of  products  or  articles  bearing  a  counterfeit  or  fraudu- 
lently affixed  mark. 

ART.  15.  They  shall  be  punished  by  a  fine  of  from  five 
Syrian  pounds  to  sixty  Syrian  pounds,  or  by  imprisonment  of 
from  one  week  to  two  months,  or  by  these  two  penalties  at  the 
same  time: 

1)  Who  have  fraudulently  altered  a  mark  or  have  made 
use  of  a  fraudulently  altered  mark ; 

2)  Who  have  affixed  genuine  marks  to  a  class  of  product 
or  article  with  the  manifest  intention  of  deceiving  the  pur- 
chaser regarding  the  nature  of  the  product; 

3)  Who  have  knowingly  sold  or  placed  on  sale  goods  bear- 
ing these  marks. 

ART.  16.  They  shall  be  punished  by  a  fine  of  from  two 
Syrian  pounds  to  twenty  Syrian  pounds,  or  by  imprisonment  of 
from  twenty-four  hours  to  one  week,  or  by  these  two  penalties 
at  the  same  time,  who  have  not  affixed  said  mark  to  their  prod- 
ucts or  articles,  for  which  the  mark  has  been  declared  obligatory, 
such  as  is  provided  for  in  Art.  2,  and  who  shall  have  sold  or 
placed  on  sale  goods  not  bearing  the  same. 

ART.  17.  In  the  case  in  which  an  individual  shall  be  sum- 
moned by  reason  of  several  crimes  determined  in  the  present 
regulations,  he  shall  be  amenable  only  to  the  penalty  prevailing 
for  the  gravest  crime. 

ART.  18.  In  case  of  repetition,  the  penalty  shall  be  doubled 
at  the  most.  Any  individual  shall  be  considered  a  second  of- 
fender who,  after  having  been  punished  for  one  of  the  above 
specified  crimes,  shall  commit  one  of  these  crimes  within  five 


898  SYRIA  AND  LEBANON 

years,  counting  from  the  date  of  the  first  conviction. 

ART.  19.  Confiscation  of  the  products  and  articles  whose 
mark  shall  be  recognized  as  contrary  to  the  dispositions  of 
Arts.  14  and  15,  as  well  as  of  the  instruments  and  utensils  that 
have  specially  served  for  the  making  of  this  mark,  may  be  pro- 
nounced by  the  tribunal,  even  in  case  of  non-condemnation  of 
the  accused. 

The  tribunal  may  order  that  articles  bearing  a  counterfeit 
mark  belonging  to  another,  and  confiscated,  as  well  as  the  coun- 
terfeit mark,  shall  be  delivered  to  the  owner  of  the  genuine 
mark. 

The  value  of  these  articles  may,  if  necessary,  be  calculated 
in  the  amount  of  the  damages  and  injuries.  Any  mark  recog- 
nized as  contrary  to  the  provisions  of  Arts.  14  and  15  shall  be 
destroyed  in  every  case. 

ART.  20.  Those  that  have  knowingly  sold  or  placed  on  sale 
products  not  bearing  a  mark  declared  obligatory  for  this  class 
of  products  shall  be  amenable  to  the  penalty  provided  for  by 
Art.  14,  without  prejudice  to  the  obligation  of  affixing  upon 
these  articles  the  marks  declared  obligatory. 

In  case  of  repetition  within  a  lapse  of  time  of  five  years, 
counting  from  the  date  of  conviction  for  a  crime  of  this  nature, 
the  Court  may  order  the  confiscation  of  the  products  and 
articles. 

The  same  penalties  against  those  who  have  affixed  to  their 
products  the  name  of  a  locality  other  than  that  of  the  real 
origin  of  these  products. 

ART.  21.  They  shall  be  punished,  according  to  the  degree 
of  gravity  of  the  crime,  by  a  fine  of  from  five  Syrian  pounds  to 
one  hundred  Syrian  pounds,  or  by  imprisonment  of  from  one 
month  to  six  months,  or  both,  who  have  indicated  upon  their 
products  a  locality  of  Syria  or  of  Lebanon  other  than  that  of  the 
real  origin  of  these  products,  as  well  as  those  that  have  know- 
ingly sold  or  placed  on  sale  products  of  this  nature. 

ART.  22.  Actions  resulting  from  facts  as  provided  for  in 
Art.  21  shall  be  adjudged  in  conformity  with  the  provisions  of 
the  present  regulation  relative  to  jurisdiction. 

ART.  23.  In  the  case  in  which  products  of  a  counterfeit 
mark  and  bearing  the  name  of  any  country  whatever  are  re- 
leased at  the  Customs,  they  shall  not  be  prohibited  entry,  with- 
out prejudice,  however,  to  action  being  brought  by  manufac- 
turers of  products  the  marks  whereof  are  counterfeited,  if  they 
are  counterfeited  abroad. 

Products  the  owner  of  which  shall  not  be  known  shall  be 
held  at  the  Custom  House  for  one  year. 


SYRIA  AND  LEBANON  899 

On  the  expiration  of  the  year,  if  these  products  are  not 
susceptible  of  being  kept  one  year  more,  they  shall  be  placed 
on  sale  by  way  of  adjudication,  before  they  shall  have  deterio- 
rated; the  counterfeit  mark  affixed  thereto  shall  first  be  de- 
stroyed. 

The  proceeds  from  the  sale  of  these  articles,  deduction  being 
made  for  storage  charges,  shall  be  kept  at  the  Custom  House 
until  the  end  of  the  second  year  in  order  to  be  delivered  to  the 
owner  following  his  claim;  in  default  of  claim  before  the  said 
date,  they  shall  be  turned  over  to  the  Cashier's  Office  of  the 
Administration  for  the  profit  of  this  latter. 

The  products  seized  in  the  Custom  House,  products  of 
which  it  would  be  impossible  to  destroy  the  mark  and  which 
shall  not  be  claimed  for  a  full  year  by  their  owner,  shall  be 
destroyed. 

AKT.  24.  The  Secretary  General,  the  Chief  of  Economic 
Services,  the  Financial  Counselor  of  the  High  Commissariat, 
the  Governor  of  Grand  Lebanon,  the  Delegates  of  the  High  Com- 
missioner at  Damas  and  at  Alep,  the  Administrator  of  the  Au- 
tonomous Territory  of  the  Alaouites,  and  the  Administrative 
Counselor  of  the  Sandjak  of  Alexandretta  are  charged,  each  in 
whatever  concerns  him,  with  the  execution  of  the  present  order. 


TANGANYIKA  TERRITORY 


TO  MAKE  PEOVISION  FOR  THE 

OF  TRADE  MARKS 
OF  [OCTOBER  12]  1921 

Short  title 

1.  This  Ordinance  may  be  cited  as  the  Trade  Marks  Ordi- 
nance, 1921,  and  shall  come  into  operation  on  such  date  as  the 
Governor  may  by  notice  in  the  Gazette  appoint. 

PARTI 

Definitions 

2.  In  and  for  the  purposes  of  this  Ordinance  (unless  the 
context  otherwise  requires)  — 

A  "mark"  shall  include  a  device,  brand,  heading,  label, 
ticket,  name,  signature,  word,  letter,  numeral,  or  any  combina- 
tion thereof. 

A  "trade  mark"  shall  mean  a  mark  used  or  proposed  to 
be  used  upon  or  in  connexion  with  goods  for  the  purpose  of 
indicating  that  they  are  the  goods  of  the  proprietor  of  such 
trade  mark,  by  virtue  of  manufacture,  selection,  certification, 
dealing  with  or  offering  for  sale. 

A  "registrable  trade  mark"  shall  mean  a  trade  mark  which 
is  capable  of  registration  under  the  provisions  of  this  Ordinance. 

"The  register"  shall  mean  the  register  of  trade  marks 
kept  under  the  provisions  of  this  Ordinance. 

A  "registered  trade  mark"  shall  mean  a  trade  mark  which 
is  actually  upon  the  register. 

"Prescribed"  shall  mean,  in  relation  to  proceedings  before 
the  Court,  prescribed  by  Rules  of  Court  and  in  other  cases  pre- 
scribed by  this  Ordinance  or  the  Rules  thereunder. 

"The  Court"  shall  mean  His  Majesty's  High  Court  of 
Tanganyika. 

Appointment  of  Registrar 

3.  (1)  The  Governor  shall  appoint  a  fit  and  proper  person, 
hereinafter  referred  to  as  the  "Registrar,"  to  be  the  Registrar 
of  Trade  Marks  under  and  for  the  purposes  of  this  Ordinance. 

(2)  The  Registrar  shall  have  seal  of  such  device  as  may 
be  approved  by  the  Secretary  of  State,  provided  always  that 
until  such  seal  has  been  obtained  a  stamp  in  such  form  as  the 
Governor  may  approve  shall  be  used  in  lieu  thereof. 


TANGANYIKA  TEREITOEY  901 

(3)  Impressions  of  such  seal  or  stamp  shall  be  judicially 
noticed  and  admitted  in  evidence. 

(4)  Any  act  or  thing  directed  to  be  done  by  or  to  the 
Eegistrar  may  be  done  by  or  to  any  officer  authorised  by  the 


EEO,™  o,  TRADE 
Register  of  Trade  Marks 

4.  The  Eegistrar  shall  for  the  purposeVWTftiS'  Ordinance 
keep  a  book  called  the  '  *  Eegister  of  Trade  Marks  '  '  wherein  shall 
be  entered  all  registered  trade  marks,  with  the  names  and  ad- 
dresses of  their  proprietors,  notifications  of  assignments  and 
transmissions,   disclaimers,   conditions,   limitations,   and   such 
other  matters,  relating  to  such  trade  marks,  as  may  from  time 
to  time  be  prescribed. 

Division  of  Register 

5.  (1)  The  Eegister  shall  be  divided  into  two  parts  to  be 
called  respectively  Part  A  and  Part  B. 

(2)  Part  A  shall  comprise  trade  marks  which  may  be  regis- 
tered under  this  Ordinance  in  accordance  with  the  provisions 
for  registration  in  Part  A. 

(3)  Part  B  shall  comprise  all  trade  marks  which  may  be 
registered  under  this  Ordinance  in  accordance  with  the  pro- 
visions for  registration  in  Part  B  or  which  may  be  entered  on 
or  removed  thereto  under  this  Ordinance. 

Trust  not  to  be  entered  in  Register 

6.  There  shall  not  be  entered  in  the  Eegister  any  notice 
of  any  trust  expressed,  implied  or  constructive,  nor  shall  any 
such  notice  be  receivable  by  the  Eegistrar. 

Inspection  of  and  extract  from  Register 

7.  The  Eegister  kept  under  this  Ordinance  shall  at  all  con- 
venient times  be  open  to  the  inspection  of  the  public,  subject 
to  such  regulations  as  may  be  prescribed,  and  certified  copies 
sealed  with  the  seal  of  the  Eegistrar  of  any  entry  in  any  such 
Eegister  shall  be  given  to  any  person  requiring  the  same  on  pay- 
ment of  the  prescribed  fee. 

EEGISTEABLE  TRADE  MARKS 
Particular  goods 

8.  A  trade  mark  must  be  registered  in  respect  of  particu- 
lar goods  or  classes  of  goods. 

Trade  marks  registrdble  under  Part  A 

9.  A  trade  mark  registrable  under  Part  A  must  contain 
or  consist  of  at  least  one  of  the  following  essential  particulars  : 

(1)  The  name  of  a  company,  individual  or  firm  represented 
in  a  special  or  particular  manner; 


902  TANGANYIKA  TERRITORY 

(2)  The  signature  of  the  applicant  for  the  registration  or 
some  predecessor  in  his  business ; 

(3)  An  invented  word  or  invented  words; 

(4)  A  word  or  words  having  no  direct  reference  to  the 
character  or  quality  of  the  goods  and  not  being  according  to  its 
ordinary  signification  a  geographical  name  or  surname ; 

(5)  Any  other  distinctive  mark  but  a  name,  signature,  or 
word  or  words  other  than  such  as  fall  within  the  description  in 
the  above  paragraphs  (1),  (2),  (3),  and  (4)  shall  not  be  regis- 
trable  under  the  provisions  of  this  paragraph  except  upon  evi- 
dence of  its  distinctiveness. 

For  the  purposes  of  this  Section  "  distinctive "  shall  mean 
adapted  to  distinguish  the  goods  of  the  proprietor  of  the  trade 
mark  from  those  of  other  persons. 

In  determining  whether  a  trade  mark  is  so  adopted  the 
Court  may,  in  the  case  of  a  trade  mark  in  actual  use,  take  into 
consideration  the  extent  to  which  such  user  has  rendered  such 
trade  mark  in  fact  distinctive  for  the  goods  with  respect  to 
which  it  is  registered  or  proposed  to  be  registered. 

Provided  always  that  any  mark  which  has  been  registered 
as  a  distinctive  mark  in  Part  A  of  the  Register  kept  in  the 
United  Kingdom  under  the  Trade  Marks  Acts,  1905  to  1919, 
shall  be  deemed  to  be  a  distinctive  mark  for  the  purpose  of  this 
Ordinance. 

Coloured  trade  marks 

10.  A  trade  mark  may  be  limited  in  whole  or  in  part  to 
one  or  more  specified  colours  and  in  such  case  the  fact  that  it 
is  so  limited  shall  be  taken  into  consideration  by  any  Court  hav- 
ing to  decide  on  the  distinctive  character  of  such  trade  mark. 

In  and  so  far  as  a  trade  mark  is  registered  without  limita- 
tion of  colour  it  shall  be  deemed  to  be  registered  for  all  colours. 
Restriction  of  registration 

11.  It  shall  not  be  lawful  to  register  as  a  trade  mark  or 
part  of  a  trade  mark  any  matter  the  use  of  which  would  by 
reason  of  its  being  calculated  to  deceive  or  otherwise  be  dis- 
entitled to  protection  in  a  Court  of  Justice  or  would  be  contrary 
to  law  or  morality,  or  scandalous  design. 

REGISTRATION  OF  TRADE  MARKS 
Application  for  registration 

12.  (1)  Any  person  claiming  to  be  the  proprietor  of  a 
trade  mark  desirous  of  registering  the  same  in  Part  A  must 
apply  in  writing  to  the  Registrar  in  the  prescribed  manner. 

(2)  Subject  to  the  provisions  of  this  Ordinance  the  Regis- 
trar may  refuse  such  application  or  may  accept  it  absolutely 


TANGANYIKA  TERRITORY  903 

or  subject  to  conditions,  amendments  or  modifications  or  to  such 
limitations,  if  any,  as  to  mode  or  place  of  user  or  otherwise  as 
he  may  think  right  to  impose. 

(3)  In  the  case  of  such  refusal  or  conditional  acceptance 
the  Registrar  shall,  if  required  by  the  applicant,  state  in  writing 
the  grounds  of  his  decision  and  the  material  used  by  him  in 
arriving  at  the  same,  and  such  decision  shall  be  subject  to  ap- 
peal to  the  Court. 

(4)  An  appeal  under  this  section  shall  be  made  in  the  pre- 
scribed manner  and  on  such  appeal  the  Court  shall,  if  required, 
hear  the  applicant  and  the  Registrar  and  shall  make  an  order 
determining  whether,  and  subject  to  what  conditions,  amend- 
ments and  modifications,  if  any,  or  to  what  limitations,  if  any, 
as  to  mode  or  place  of  user  or  otherwise  the  application  is  to 
be  accepted. 

(5)  Appeals  under  this  section  shall  be  heard  on  the  ma- 
terials so  stated  by  the  Registrar  to  have  been  used  by  him  in 
arriving  at  his  decision,  and  no  further  grounds  of  objection  to 
the  acceptance  of  the  application  shall  be  allowed  to  be  taken  by 
the  Registrar,  other  than  those  stated  by  him,  except  by  leave 
of  the  tribunal  hearing  the  appeal.    Where  any  further  grounds 
of  objection  are  taken  the  applicant  shall  be  entitled  to  with- 
draw his  application  without  payment  of  costs  on  giving  notice 
as  prescribed. 

(6)  The  Registrar  or  the  Court,  as  the  case  may  be,  may 
at  any  time,  whether  before  or  after  acceptance,  correct  any 
error  in  or  in  connection  with  the  application,  or  may  permit 
the  applicant  to  amend  his  application  upon  such  terms  as  they 
may  think  fit. 

Registration  of  trade  marks  in  Part  B 
13.  (1)  Where  any  mark  has  for  not  less  than  two  years 
been  bona  fide  used  in  the  Territory  upon  or  in  connection  with 
any  goods  (whether  for  sale  in  the  Territory  or  exportation 
abroad),  for  the  purpose  of  indicating  that  they  are  goods  of 
the  proprietor  of  the  mark  by  virtue  of  manufacture,  selection, 
certification,  dealing  with  or  offering  for  sale  or  where  any 
mark  has  been  registered  in  Part  B  of  the  Register  kept  in  the 
United  Kingdom  under  the  Trade  Marks  Acts,  1905  to  1919,  the 
person  claiming  to  be  the  proprietor  of  the  mark  may  apply  in 
writing  to  the  Registrar  in  the  prescribed  manner  to  have  the 
mark  entered  as  his  registered  trade  mark  in  Part  B  of  the 
Register  in  respect  of  such  goods. 

(2)  The  Registrar  shall  consider  every  such  application 
for  registration  of  a  trade  mark  in  Part  B  of  the  Register  and 
if  it  appears  to  him,  after  such  search,  if  any,  as  he  may  deem 


904  TANGANYIKA  TERRITORY 

necessary,  that  the  application  is  inconsistent  with  the  provi- 
sions of  section  11  or  section  23  of  this  Ordinance,  or  if  he  is 
not  satisfied  that  the  mark  has  been  so  used  as  aforesaid,  or 
that  it  is  capable  of  distinguishing  the  goods  of  the  applicant, 
he  may  refuse  the  application,  or  may  accept  it  subject  to  con- 
ditions, amendments  or  modifications  as  to  the  goods  or  classes 
of  goods  in  respect  of  which  the  mark  is  to  be  registered,  or  to 
such  limitations,  if  any,  as  to  mode  or  place  of  user  or  other- 
wise as  he  may  think  right  to  impose,  and  in  any  other  case  he 
shall  accept  the  application. 

(3)  Every  such  application  shall  be  accompanied  by  a 
statutory  declaration  verifying  the  user,  including  the  date  of 
first  user,  and  such  date  shall  be  entered  on  the  Register. 

(4)  Any  such  refusal  or  conditional  acceptance  shall  be 
subject  to  appeal  to  the  Court,  and,  if  the  ground  for  refusal  is 
insufficiency  of  evidence  as  to  user,  such  refusal  shall  be  without 
prejudice  to  any  application  for  registration  of  the  trade  mark 
in  Part  A  of  the  Register. 

(5)  A  mark  may  be  registered  in  Part  B  notwithstanding 
any  registration  in  Part  A  by  the  same  proprietor  of  the  same 
mark  or  any  part  or  parts  thereof. 

Certain  sections  not  to  apply 

(6)  The  provisions  of  sections  18  (9),  19,  28,  29,  31,  35  and 
62  of  this  Ordinance  shall  not  apply  in  respect  of  trade  marks 
to  which  this  section  applies. 

Power  to  treat  applications  for  registration  in  Part  A  as  ap- 
plications for  registration  in  Part  B 

14.  If  any  person  applies  for  the  registration  of  a  trade 
mark  in  Part  A  of  the  Register,  the  Registrar  may,  if  the  ap- 
plicant is  willing,  instead  of  refusing  the  application,  treat  it 
as  an  application  for  registration  in  Part  B  of  the  Register  and 
deal  with  the  application  accordingly. 

Removal  from  Register  of  word  trade  mark  used  as  name 

of  articles 

15.  (1)  Where  in  the  case  of  an  article  or  substance  manu- 
factured under  any  patent  in  force  at  or  granted  after  the  pass- 
ing of  this  Ordinance,  a  word  trade  mark  registered  under  this 
Ordinance  is  the  name  or  only  practicable  name  of  the  article  or 
substance  so  manufactured  all  rights  to  the  exclusive  use  of  such 
trade  mark,  whether  under  the  common  law  or  by  registration 
(and  notwithstanding  the  provisions  of  section  44  of  the  Ordi- 
nance), shall  cease  upon  the  expiration  or  determination  of  the 
patent,  and  thereafter  such  word  shall  not  be  deemed  a  distinc- 
tive trade  mark,  and  may  be  removed  by  the  Court  from  the 


TANGANYIKA  TERRITORY  905 

Register  on  the  application  of  any  person  aggrieved. 

(2)  No  word  which  is  the  only  practicable  name  or  descrip- 
tion of  any  single  chemical  element  or  single  chemical  com- 
pound, as  distinguished  from  mixture,  shall  be  registered  as  a 
trade  mark,  and  any  such  word  on  the  Register  may,  notwith- 
standing section  44  of  this  Ordinance,  be  removed  by  the  Court 
from  the  Register  on  the  application  of  any  person  aggrieved: 

Provided  that  the  provisions  of  this  sub-section  shall  not 
apply  where  the  mark  is  used  to  denote  only  the  proprietor's 
brand  or  make  of  such  substance,  as  distinguished  from  the 
substance  as  made  by  others,  and  in  association  with  a  suitable 
and  practicable  name  open  to  the  public  use. 

(3)  The  power  to  remove  a  trade  mark  from  the  Register 
conferred  by  this  section  shall  be  in  addition  to  and  not  in 
derogation  of  any  other  powers  of  the  Court  in  respect  of  the 
removal  of  trade  marks  from  the  Register. 

Address  for  service 

16.  When  an  applicant  for  the  registration  of  a  trade  mark 
or  an  agent  does  not  reside  or  carry  on  business  in  the  Territory 
he  shall  give  the  Registrar  an  address  for  service  in  the  Terri- 
tory, and  if  he  fails  to  do  so  the  Register  may  refuse  to  proceed 
with  the  application  until  such  address  has  been  given. 

Advertisement  of  application 

17.  When  an  application  for  registration  of  a  trade  mark 
has  been  accepted,  whether  absolutely  or  subject  to  conditions 
and  limitations,  the  Registrar  shall  as  soon  as  may  be  after 
such  acceptance  cause  the  application  as  accepted  to  be  adver- 
tised in  the  Gazette.     Such  advertisement  shall  set  forth  all 
conditions  and  limitations  subject  to  which  the  application  has 
been  accepted. 

Provided  that  an  application  under  the  provisions  of  sub- 
section (5)  of  section  9  of  this  Ordinance  may  be  advertised  by 
the  Registrar  on  receipt  of  such  application  and  before  ac- 
ceptance. 

Opposition  to  registration 

18.  (1)  Any  person  may  within  the  prescribed  time  from 
the  date  of  the  advertisement  of  an  application  for  the  regis- 
tration of  a  trade  mark  give  notice  to  the  Registrar  of  opposi- 
tion to  such  registration. 

(2)  Such  notice  shall  be  given  in  writing  in  the  prescribed 
manner  and  shall  include  a  statement  of  the  grounds  of  op- 
position. 

(3)  The  Registrar  shall  send  a  copy  of  such  notice  to  the 
applicant  and  within  the  prescribed  time  after  the  receipt  of 


906  TANGANYIKA  TERRITORY 

such  notice  the  applicant  shall  send  to  the  Registrar  in  the  pre- 
scribed manner  a  counter-statement  of  the  grounds  on  which 
he  relies  for  his  application,  and  if  he  does  not  do  so  he  shall 
be  deemed  to  have  abandoned  his  application. 

(4)  If  the  applicant  sends  such  counter-statement  the  Reg- 
istrar shall  furnish  a  copy  thereof  to  the  persons  giving  notice 
of  opposition,  and  shall,  after  hearing  the  parties,  if  so  required, 
and  considering  the  evidence,  decide  whether,  and  subject  to 
what  conditions,  or  what  limitations  as  to  mode  or  place  of  user 
or  otherwise,  registration  is  to  be  permitted. 

(5)  The  decision  of  the  Registrar  shall  be  subject  to  appeal 
to  the  Court. 

(6)  An  appeal  under  this  section  shall  be  made  in  the 
prescribed  manner,  and  on  such  appeal  the  Court  shall,  if  re- 
quired, hear  the  parties  and  the  Registrar,  and  shall  make  an 
order  determining  whether,  and  subject  to  what  conditions,  if 
any,  or  what  limitations,  if  any,  as  to  mode  or  place  of  user  or 
otherwise  registration  is  to  be  permitted. 

(7)  On  the  hearing  of  any  such  appeal  any  party  may 
either  in  the  manner  prescribed  or  by  special  leave  of  the 
tribunal  bring  forward  material  for  the  consideration  of  the 
tribunal. 

(8)  In  proceedings  under  this  section  no  further  grounds 
of  objection  to  the  registration  of  a  trade  mark  shall  be  allowed 
to  be  taken  by  the  opponent  or  the  Registrar  other  than  those 
stated  by  the  opponent  as  hereinabove  provided,  except  by  leave 
of  the  tribunal  hearing  the  appeal.    Where  any  further  grounds 
of  objection  are  taken  the  applicant  shall  be  entitled  to  with- 
draw his  application  without  payment  of  the  costs  of  the  oppo- 
nent on  giving  notice  as  prescribed. 

(9)  In  any  appeal  under  this  section,  the  tribunal  may, 
after  hearing  the  Registrar,  permit  the  trade  mark  proposed 
to  be  registered  to  be  modified  in  any  manner  not  substantially 
affecting  the  identity  of  such  trade  mark,  but  in  such  case  the 
trade  mark  as  so  modified  shall  be  advertised  in  the  prescribed 
manner  before  being  registered. 

(10)  If  a  party  giving  notice  of  opposition  or  of  appeal 
neither  resides  nor  carries  on  business  in  the  Territory,  the 
tribunal  may  require  such  party  to  give  security  for  costs  of 
the  proceedings  before  it  relative  to  such  opposition  or  appeal, 
and  in  default  of  such  security  being  given  may  treat  the  oppo- 
sition or  appeal  as  abandoned. 

Disclaimers 

19.    If  a  trade  mark  contains  parts  not  separately  regis- 
tered by  the  proprietor  as  trade  marks,  or  if  it  contains  matter 


TANGANYIKA  TERRITORY  907 

common  to  the  trade,  or  otherwise  of  a  non-distinctive  character 
the  Registrar  or  the  Court,  in  deciding  whether  such  trade  mark 
shall  be  entered  or  shall  remain  upon  the  Register  may  require 
as  a  condition  of  its  being  upon  the  Register  that  the  proprietor 
shall  disclaim  any  right  to  the  exclusive  use  of  any  part  or  parts 
of  such  trade  mark  or  of  all  or  any  portion  of  such  matter  to  the 
exclusive  use  of  which  they  hold  him  not  to  be  entitled  or  that 
he  shall  make  such  other  disclaimer  as  they  may  consider  needful 
for  the  purpose  of  denning  his  rights  under  such  registrations. 
Provided  always  that  no  disclaimer  upon  the  Register  shall 
affect  any  rights  of  the  proprietor  of  a  trade  mark  except  such 
as  arise  out  of  the  registration  of  the  trade  mark  in  respect  of 
which  the  disclaimer  is  made. 

Date  of  registration 

20.  When  an  application  for  registration  of  a  trade  mark 
has  been  accepted  and  has  not  been  opposed,  and  the  time  for 
notice  of  opposition  has  expired  or,  having  been  opposed,  the 
opposition  has  been  decided  in  favour  of  the  applicant,  the 
Registrar  shall,  unless  the  mark  has  been  accepted  in  error, 
register  the  said  trade  mark,  and  the  trade  mark  when  regis- 
tered shall  be  registered  as  of  the  date  of  the  application  for 
registration  and  such  date  shall  be  deemed,  for  the  purposes 
of  this  Ordinance,  to  be  date  of  registration. 

Certificate  of  registration 

21.  On  the  registration  of  a  trade  mark  the  Registrar  shall 
issue  to  the  applicant  a  certificate  in  the  prescribed  form  of  the 
registration  of  such  trade  mark  under  the  hand  and  seal  of  the 
Registrar. 

Non-completion  of  registration 

22.  Where  the  registration  of  a  trade  mark  is  not  com- 
pleted within  twelve  months  from  the  date  of  the  application  by 
reason  of  default  on  the  part  of  the  applicant,  the  Registrar 
may,  after  giving  notice  in  writing  of  the  non-completion  to  the 
applicant  in  the  prescribed  manner  treat  the  application  as 
abandoned  unless  it  is  completed  within  the  time  specified  in 
that  behalf  in  such  notice. 

IDENTICAL  TRADE  MARKS 

23.  Except  by  order  of  the  Court  no  trade  mark  shall  be 
registered  in  respect  of  any  goods  or  description  of  goods  which 
is  identical  with  one  belonging  to  a  different  proprietor  which 
is  already  on  the  Register  with  respect  to  such  goods  or  de- 
scription of  goods  or  so  nearly  resembling  such  a  trade  mark 
as  to  be  calculated  to  deceive. 

Rival  claims  to  identical  marks 

24.  Where  each  of  several  persons  claims  to  be  the  pro- 


908  TANGANYIKA  TERRITORY 

prietor  of  the  same  trade  mark  or  of  nearly  identical  trade 
marks,  in  respect  of  the  same  goods  or  description  of  goods  and 
to  be  registered  as  such  proprietor,  the  Registrar  may  refuse 
to  register  any  of  them  until  their  rights  have  been  determined 
by  the  Court,  or  have  been  settled  by  agreement  in  a  manner 
approved  by  him  or  by  the  Court. 

Concurrent  user 

25.  In  case  of  honest  concurrent  user  or  of  other  special 
circumstances  which  in  the  opinion  of  the  Court  or  Registrar 
make  it  proper  to  do  so,  the  Court  or  Registrar  may  permit  the 
registration  of  the  same  trade  mark  or  of  nearly  identical  trade 
marks,  for  the  same  goods  or  description  of  goods,  by  more 
than  one  proprietor  subject  to  such  conditions  and  limitations, 
if  any,  as  to  mode  or  place  of  user  or  otherwise  as  the  Court 
or  Registrar,  as  the  case  may  be,  may  think  it  right  to  impose. 

ASSIGNMENT 
Assignment  and  transmission  of  trade  marks 

26.  A  trade  mark  when  registered  shall  be  assigned  and 
transmitted  only  in  connexion  with  the  goodwill  of  the  business 
concerned  in  the  goods  for  which  it  has  been  registered  and  shall 
be  determinable  with  that  goodwill. 

But  nothing  in  this  section  contained  shall  be  deemed  to 
affect  the  right  of  the  proprietor  of  a  registered  trade  mark  to 
assign  the  right  to  use  the  same  in  the  United  Kingdom  or  in 
any  British  possession  or  protectorate  or  in  any  foreign  country 
in  connexion  with  any  goods  for  which  it  is  registered,  together 
with  the  goodwill  of  the  business  therein  in  such  goods  and  the 
assignment  of  such  right  to  use  the  same  shall  constitute  the 
assignee  a  proprietor  of  a  separate  trade  mark  for  the  purpose 
of  section  25  of  this  Ordinance,  subject  to  such  conditions  and 
limitations  as  may  be  imposed  under  that  section. 

Apportionment  of  marks  on  dissolution  of  partnership 

27.  In  any  case  where  from  any  cause,  whether  by  reason 
of  dissolution  of  partnership  or  otherwise,  a  person  ceases  to 
carry  on  business,  and  the  goodwill  of  such  person  does  not 
pass  to  one  successor  but  is  divided,  the  Registrar  may  (subject 
to  the  provisions  of  this  Ordinance  as  to  associated  trade  marks) 
on  the  application  of  the  parties  interested  permit  an  appor- 
tionment of  the  registered  trade  marks  of  the  person  among  the 
persons  in  fact  continuing  the  business;  subject  to  such  condi- 
tions and  modifications,  if  any,  and  to  such  limitations,  if  any, 
as  to  mode  or  place  of  user  as  he  may  think  necessary  in  the 
public  interest.    Any  decision  of  the  Registrar  under  this  sec- 
tion shall  be  subject  to  appeal  to  the  Court. 


TANGANYIKA  TERRITORY  909 

ASSOCIATED  TRADE  MARKS 

28.  If  the  application  be  made  for  the  registration  of  a 
trade  mark  identical  with  or  so  closely  resembling  a  trade  mark 
of  the  applicant  already  on  the  Register  for  the  same  goods  or 
description  of  the  goods  as  to  be  calculated  to  deceive  or  cause 
confusion  if  used  by  a  person  other  than  the  applicant,  the 
tribunal  hearing  the  application  may  require  as  a  condition  of 
registration  that  such  trade  marks  shall  be  entered  on  the 
Register  as  associated  trade  marks. 

Combined  trade  marks 

29.  If  the  proprietor  of  a  trade  mark  claims  to  be  entitled 
to  the  exclusive  use  of  any  portion  of  such  trade  mark  sepa- 
rately he  may  apply  to  register  the  same  as  separate  trade 
marks.     Each  such  separate  trade  mark  must  satisfy  all  the 
conditions  and  shall  have  all  the  incidents  of  an  independent 
trade  mark  except  that  when  registered  it  and  the  trade  mark 
of  which  it  forms  a  part  shall  be  deemed  to  be  associated  trade 
marks,  and  shall  be  entered  on  the  Register  as  such,  but  the  user 
of  the  whole  trade  mark  shall  for  the  purposes  of  this  Ordinance 
be  deemed  to  be  also  a  user  of  such  registered  trade  marks 
belonging  to  the  same  proprietor  as  it  contains. 

Series  of  trade  marks 

30.  When  a  person  claiming  to  be  the  proprietor  of  several 
trade  marks  for  the  same  description  of  goods  which  while 
resembling  each  other  in  the  material  particulars  thereof  yet 
differ  in  respect  of: — 

(a)  statements  of  the  goods  for  which  they  are  respectively 
used  or  proposed  to  be  used;  or 

(b)  statements    of   number,   price,   quality   or   names    of 
places;  or 

(c)  other  matter  of  a  non-distinctive  character  which  doea 
not  substantially  affect  the  identity  of  the  trade  mark;  or 

(d)  colour; 

seeks  to  register  such  trade  marks,  they  may  be  registered  in  a 
series  in  one  registration.  All  trade  marks  so  registered  shall 
be  deemed  to  be  and  shall  be  registered  as  associated  trade 
marks. 

Assignment  and  user  of  associated  trade  marks 

31.  Associated  trade  marks  shall  be  assignable  or  trans- 
missible only  as  a  whole  and  not  separately,  but  they  shall  for 
all  other  purposes  be  deemed  to  have  been  registered  as  separate 
trade  marks. 

Provided  that  where  under  the  provisions  of  this  Ordinance 
user  of  a  registered  trade  mark  is  required  to  be  proved  for  any 
purpose,  the  tribunal  may,  if  and  so  far  as  it  shall  think  right, 


910  TANGANYIKA  TERRITORY 

accept  user  of  an  associated  trade  mark  with  additions  or  altera- 
tions not  substantially  affecting  its  identity  as  an  equivalent 
for  such  user. 

RENEWAL  OP  REGISTRATION 
Duration  of  registration 

32.  The  registration  of  a  trade  mark  shall  be  for  a  period 
of  fourteen  years,  but  may  be  renewed  from  time  to  time  in 
accordance  with  the  provisions  of  this  Ordinance. 

Renewal  of  registration 

33.  The  Registrar  shall,  on  application  made  by  the  regis- 
tered proprietor  of  a  trade  mark,  in  the  prescribed  manner  and 
within  the  prescribed  period,  renew  the  registration  of  such 
trade  mark  for  a  period  of  fourteen  years  from  the  expiration 
of  the  original  registration  or  of  the  last  renewal  of  registration, 
as  the  case  may  be,  which  date  is  herein  termed  ' '  the  expiration 
of  the  last  registration. " 

Procedure  on  expiry  of  period  of  registration 

34.  At  the  prescribed  time  before  the  expiration  of  the  last 
registration  of  a  trade  mark,  the  Registrar  shall  send  notice 
in  the  prescribed  manner  to  the  registered  proprietor  at  his 
registered  address  of  the  date  at  which  the  existing  registration 
will  expire  and  the  conditions  as  to  payment  of  fees  and  other- 
wise upon  which  a  renewal  of  such  registration  may  be  obtained, 
and  if  at  the  expiration  of  the  time  prescribed  in  that  behalf 
such  conditions  have  not  been  duly  complied  with,  the  Registrar 
may  remove  such  trade  mark  from  the  Register,  subject  to  such 
conditions,  if  any,  as  to  its  restoration  as  may  be  prescribed. 

Status  of  unrenewed  trade  mark 

35.  Where  a  trade  mark  has  been  removed  from  the  Regis- 
ter for  non-payment  of  the  fee  for  renewal,  such  trade  mark 
shall  nevertheless  for  the  purpose  of  an  application  for  regis- 
tration during  one  year  next  after  the  date  of  such  removal  be 
deemed  to  be  a  trade  mark  which  is  already  registered,  unless 
it  is  shown  to  the  satisfaction  of  the  Registrar  that  there  had 
been  no  bona  fide  trade  user  of  such  trade  mark  during  the  two 
years  immediately  preceding  such  removal. 

COEEECTION  AND  RECTIFICATION  OF  REGISTER 

Correction  of  register 

36.  The  Registrar  may,  on  request,  made  in  the  prescribed 
manner  by  the  registered  proprietor  or  by  some  person  entitled 
by  law  to  act  in  his  name 

(1)  correct  any  error  in  the  name  or  address  of  the  person 
who  is  registered  as  proprietor  of  a  trade  mark;  or 

(2)  enter  any  change  in  the  name  or  address  of  the  person 


TANGANYIKA  TERRITORY  911 

who  is  registered  as  proprietor  of  a  trade  mark ; 

(3)  cancel  the  entry  of  a  trade  mark  on  the  Register; 

(4)  strike  out  any  goods  or  classes  of  goods  from  those 
for  which  a  trade  mark  is  registered ;  or 

(5)  enter  a  disclaimer  or  memorandum  relating  to  a  trade 
mark  which  does  not  in  any  way  extend  the  rights  given  by  the 
existing  registration  of  such  trade  mark. 

Any  decision  of  the  Registrar  under  this  section  shall  be 
subject  to  appeal  to  the  Court. 

Registration  of  assignments 

37.  (1)  Where  a  person  becomes  entitled  by  assignment, 
transmission  or  other  operation  of  law  to  a  registered  trade 
mark,  he  shall  make  application  to  the  Registrar  to  register  his 
title,  and  the  Registrar  shall,  on  receipt  of  such  application  and 
on  proof  of  title  to  his  satisfaction,  register  him  as  the  pro- 
prietor of  the  trade  mark,  and  shall  cause  an  entry  to  be  made 
in  the  prescribed  manner  on  the  Register  of  the  assignment, 
transmission  or  other  instrument  affecting  the  title.    Any  de- 
cision of  the  Registrar  under  this  section  shall  be  subject  to 
appeal  to  the  Court. 

(2)  Except  in  cases  of  appeals  under  this  section  and  ap- 
plications made  under  section  39  of  this  Ordinance,  a  document 
or  instrument  in  respect  of  which  no  entry  has  been  made  in  the 
Register  in  accordance  with  the  provisions  of  sub-section  (1) 
aforesaid  shall  not  be  admitted  in  evidence  in  any  Court  in  proof 
of  the  title  to  a  trade  mark  unless  the  Court  otherwise  directs. 

Alteration  of  registered  trade  mark 

38.  (1)  The  registered  proprietor  of  any  trade  mark  may 
apply  in  the  prescribed  manner  to  the  Registrar  for  leave  to 
add  to  or  alter  such  trade  mark  in  any  manner  not  substantially 
affecting  the  identity  of  the  same,  and  the  Registrar  may  refuse 
such  leave  or  may  grant  the  same  on  such  terms  and  subject  to 
such  limitations  as  to  mode  or  place  of  user  as  he  may  think 
fit,  but  any  such  refusal  or  conditional  permission  shall  be  sub- 
ject to  appeal  to  the  Court. 

(2)  If  leave  be  granted,  the  trade  mark  as  altered  shall 
be  advertised  in  the  prescribed  manner. 

Rectification  of  Register 

39.  Subject  to  the  provisions  of  this  Ordinance — 

(1)  The  Court  may,  on  the  application  in  the  prescribed 
manner  of  any  person  aggrieved  by  the  non-insertion  in  or 
omission  from  the  Register  of  any  entry  or  by  any  entry  made 
in  the  Register  without  sufficient  cause  or  by  an  entry  wrong- 
fully remaining  on  the  Register  or  by  an  error  or  defect  in  any 


912  TANGANYIKA  TERRITORY 

entry  in  the  Register,  make  such  order  for  making,  expunging, 
or  varying  such  entry  as  it  thinks  fit : 

(2)  The  Court  may  in  any  proceeding  under  this  section 
decide  any  question  that  it  may  be  necessary  or  expedient  to 
decide  in  connexion  with  the  rectification  of  the  Register : 

(3)  In  case  of  fraud  in  the  registration  or  transmission 
of  a  registered  trade  mark  the  Registrar  may  himself  apply  to 
the  Court  under  the  provisions  of  this  section: 

(4)  Any  order  of  the  Court  rectifying  the  Register  shall 
direct  that  notice  of  the  rectification  be  served  on  the  Registrar 
in  the  prescribed  manner,  who  shall  upon  receipt  of  such  notice 
rectify  the  Register  accordingly. 

Non-user  of  trade  mark 

40.  A  registered  trade  mark  may,  on  the  application  to 
the  Court  of  any  person  aggrieved,  be  taken  off  the  Register  in 
respect  of  any  of  the  goods  for  which  it  is  registered,  on  the 
ground  that  it  was  registered  by  the  proprietor  or  a  predecessor 
in  title  without  any  bona  fide  intention  to  use  the  same  in  con- 
nexion with  such  goods,  and  there  has  in  fact  been  no  bona  fide 
user  of  the  same  in  connexion  therewith,  or  on  the  ground  that 
there  has  been  no  bona  fide  user  of  such  trade  mark  in  connexion 
with  such  goods  during  the  five  years  immediately  preceding 
the  application,  unless  in  either  case  such  non-user  is  shown 
to  be  due  to  special  circumstances  in  the  trade  and  not  to  any 
intention  not  to  use  or  to  abandon  such  trade  mark  in  respect 
of  such  goods. 

EFFECT  OF  REGISTRATION 
Powers  of  registered  proprietor 

41.  Subject  to  the  provisions  of  this  Ordinance: 

(1)  the  person  for  the  time  being  entered  in  the  Register 
as  proprietor  of  a  trade  mark  shall,  subject  to  any  rights  ap- 
pearing from  such  Register  to  be  vested  in  any  other  person, 
have  power  to  assign  the  same  and  give  effectual  receipts  for 
any  consideration  for  such  assignment; 

(2)  any  equities  in  respect  of  a  trade  mark  may  be  en- 
forced in  like  manner  as  in  respect  of  any  other  personal 
property. 

Rights  of  the  proprietor  of  a  trade  mark 

42.  (1)  Subject  to  the  provisions  of  section  44  of  this 
Ordinance  and  to  any  limitations  and  conditions  entered  upon 
the  Register,  the  registration  of  a  person  as  proprietor  of  a 
trade  mark  in  Part  A  of  the  Register  shall,  if  valid,  give  to  such 
person  the  exclusive  right  to  the  use  of  such  trade  mark  upon 


TANGANYIKA  TERRITORY  913 

or  in  connexion  with  the  goods  in  respect  of  which  it  is  regis- 
tered. 

(2)  The  registration  of  a  person  as  the  proprietor  of  a 
trade  mark  in  Part  B  of  the  Register  shall  be  prima  facie  evi- 
dence that  that  person  has  the  exclusive  right  to  use  that  trade 
mark,  but  in  any  action  for  infringement  of  a  trade  mark 
entered  in  Part  B  of  the  Register,  no  injunction,  interdict  or 
other  relief  shall  be  granted  to  the  owner  of  the  trade  mark  in 
respect  of  such  registration,  if  the  defendant  establishes  to  the 
satisfaction  of  the  Court  that  the  user  of  which  the  plaintiff 
complains  is  not  calculated  to  deceive  or  lead  to  the  belief  that 
the  goods,  the  subject  of  such  user,  were  goods  manufactured, 
selected,  certified,  dealt  with  or  offered  for  sale  by  the  proprietor 
of  the  trade  mark. 

(3)  Provided  always  that  where  two  or  more  persons  are 
registered  proprietors  of  the  same  (or  substantially  the  same) 
trade  mark  in  respect  of  the  same  goods,  no  rights  of  exclusive 
user  of  such  trade  mark  shall  (except  in  so  far  as  their  respec- 
tive rights  shall  have  been  defined  by  the  Court)  be  acquired 
by  any  one  of  such  persons,  as  against  any  other  by  the  regis- 
tration thereof,  but  each  of  such  persons  shall  otherwise  have 
the  same  rights  as  if  he  were  the  sole  registered  proprietor 
thereof. 

Registration  prima  facie  evidence  of  validity 

43.  In  all  legal  proceedings  relating  to  a  trade  mark  regis- 
tered under  this  Ordinance  (including  applications  under  section 
39  of  this  Ordinance)  the  fact  that  a  person  is  registered  as 
proprietor  of  such  trade  mark  shall  be  prima  facie  evidence  of 
the  validity  of  the  original  registration  of  such  trade  mark  and 
of  all  subsequent  assignments  and  transmissions  of  the  same. 

Registration  conclusive  after  seven  years 

44.  In  all  legal  proceedings  relating  to  a  trade  mark  regis- 
tered under  this  Ordinance  in  Part  A  of  the  Register  (including 
applications  under  section  39  of  this  Ordinance)  the  original 
registration  of  such  trade  mark  shall  after  the  expiration  of 
seven  years  from  the  date  of  the  original  registration  be  taken 
to  be  valid  in  all  respects  unless  such  original  registration  was 
obtained  by  fraud,  or  unless  the  trade  mark  offends  against 
the  provisions  of  section  11  of  this  Ordinance. 

Provided  that  nothing  in  this  Ordinance  shall  entitle  the 
proprietor  of  a  trade  mark  registered  under  either  Part  A  or 
Part  B  to  interfere  with  or  restrain  the  user  by  any  person  of 
a  similar  trade  mark  upon  or  in  connexion  with  goods  upon  or 
in  connexion  with  which  such  person  has,  by  himself  or  his 
predecessors  in  business,  continually  used  such  trade  mark 


914 

from  a  date  anterior  to  the  user  or  registration,  whichever  is  the 
earlier,  of  the  first  mentioned  trade  mark  by  the  proprietor 
thereof  or  his  predecessors  in  business  or  to  object  (on  such 
user  being  proved)  to  such  person  being  put  upon  the  Register 
for  such  similar  trade  mark  in  respect  of  such  goods  under  the 
provisions  of  section  25  of  this  Ordinance. 
Unregistered  trade  mark 

45.  No  person  shall  be  entitled  to  institute  any  proceeding 
to  prevent  or  to  recover  damages  for  the  infringement  of  an 
unregistered  trade  mark. 

Infringement 

46.  In  any  action  or  proceeding  relating  to  a  trade  mark 
or  trade  name  the  tribunal  shall  admit  evidence  of  the  usages 
of  the  trade  concerned  and  of  any  relevant  trade  mark  or  trade 
name  or  get-up  legitimately  used  by  other  persons. 

User  of  name,  address,  or  .description  of  goods 

47.  No  registration  under  this  Ordinance  shall  interfere 
with  any  bona  fide  use  by  a  person  of  his  own  name  or  place  of 
business  or  that  of  any  of  his  predecessors  in  business  or  the 
use  by  any  person  of  any  bona  fide  description  of  the  character 
or  quality  of  his  goods. 

"Passing  off"  action 

48.  Nothing  in  this  Ordinance  contained  shall  be  deemed 
to  affect  rights  of  action  against  any  person  for  passing  off 
goods  as  those  of  another  person  or  the  remedies  in  respect 
thereof. 

LEGAL  PROCEEDINGS 
Certificate  of  validity  in  legal  proceedings 

49.  In  any  legal  proceeding  in  which  the  validity  of  a 
registered  trade  mark  comes  into  question  and  is  decided  in 
favour  of  the  proprietor  of  such  trade  mark,  the  Court  may 
certify  the  same,  and,  if  it  so  certifies,  then  in  any  subsequent 
legal  proceeding  in  which  such  validity  comes  into  question  the 
proprietor  of  the  said  trade  mark  on  obtaining  a  final  order  or 
judgment  in  his  favour  shall  have  his  full  costs,  charges  and 
expenses  as  between  solicitor  and  client,  unless  in  such  subse- 
quent proceeding  the  Court  certifies  that  he  ought  not  to  have 
the  same. 

Registrar  to  have  notice  of  proceeding  for  rectification 

50.  In  any  legal  proceeding  in  which  the  relief  sought 
includes  alteration  or  rectification  of  the  Register,  the  Registrar 
shall  have  the  right  to  appear  and  be  heard,  and  shall  appear  if 
so  directed  by  the  Court.     Unless  otherwise  directed  by  the 
Court,  the  Registrar  in  lieu  of  appearing  and  being  heard  may 


915 

submit  to  the  Court  a  statement  in  writing  signed  by  him,  giving 
particulars  of  the  proceedings  before  him  in  relation  to  the 
matter  in  issue,  or  of  the  grounds  of  any  decision  given  by  him 
affecting  the  same  or  of  the  practice  of  the  office  in  like  cases, 
or  of  such  other  matters  relevant  to  the  issues,  and  within  his 
knowledge  as  such  Registrar,  as  he  shall  think  fit,  and  such 
statement  shall  be  deemed  to  form  part  of  the  evidence  in  the 
proceeding. 

COSTS 
Costs  of  proceedings  before  the  Court 

51.  (1)  In  all  proceedings  before  the  Court  under  this 
Ordinance  the  Court  may  award  to  any  party  such  costs  as  it 
may  consider  reasonable  and  the  costs  of  the  Registrar  shall  be 
in  discretion  of  the  Court,  but  the  Registrar  shall  not  be  ordered 
to  pay  the  costs  of  any  other  of  the  parties. 

(2)  In  all  proceedings  before  the  Registrar,  the  Registrar 
shall  have  power  to  award  to  any  party  such  costs  as  he  may 
consider  reasonable  and  to  direct  how  and  by  what  parties  they 
are  to  be  paid  and  any  such  order  may  be  made  a  rule  of  Court. 

EVIDENCE 
Mode  of  giving  evidence 

52.  In  any  proceeding  under  this  Ordinance  before  the 
Registrar,  the  evidence  shall  be  given  by  statutory  declaration 
in  the  absence  of  directions  to  the  contrary,  but,  in  any  case  in 
which  he  shall  think  it  right  to  do  so,  the  Registrar  may  (with 
the  consent  of  the  parties)  take  evidence  viva  voce  in  lieu  or  in 
addition  to  evidence  by  declaration.    Any  such  statutory  dec- 
laration may  in  the  case  of  appeal  be  used  before  the  Court  in 
lieu  of  evidence  by  affidavit,  but  if  so  used  shall  have  all  the 
incidents  and  consequences  of  evidence  by  affidavit. 

In  case  any  part  of  the  evidence  is  taken  viva  voce  the 
Registrar  shall  in  respect  of  requiring  the  attendance  of  wit- 
nesses and  taking  evidence  on  oath  be  in  the  same  position  in 
all  respects  as  an  arbitrator  appointed  by  the  Court  under  the 
provisions  of  the  Civil  Procedure  Code. 

Sealed  copies  to  be  evidence 

53.  Printed  or  written  copies  or  extracts  of  or  from  the 
Register  or  of  or  from  the  Register  kept  in  the  United  King- 
dom under  the  Trade  Marks  Acts,  1905  to  1919,  purporting  to  be 
certified  by  the  Registrar  and  sealed  with  his  seal  or  by  the 
Registrar  under  the  Trade  Marks  Acts,  1905  to  1919,  and  sealed 
with  the  seal  of  the  Patent  Office  shall  be  admitted  in  evidence 
in  all  courts  and  in  all  proceedings,  without  further  proof  or 
production  of  the  originals. 


916  TANGANYIKA  TERRITORY 

Certificate  of  Registrar  to  be  evidence 

54.  A  certificate  purporting  to  be  under  the  hand  of  the 
Registrar  or  of  the  Registrar  of  Trade  Marks  in  the  United 
Kingdom  under  the  Trade  Marks  Acts,  1905  to  1919,  as  to  any 
entry,  matter  or  thing  which  he  is  authorised  to  make  or  do, 
shall  be  prima  facie  evidence  of  the  entry  having  been  made, 
and  of  the  contents  thereof,  and  of  the  matter  or  thing  having 
been  done  or  not  done. 

GENERAL 
Discretionary  powers 

55.  In  any  appeal  from  the  decision  of  the  Registrar  to 
the  Court  under  this  Ordinance  the  Court  shall  have  and  exer- 
cise the  same  discretionary  powers  as  under  this  Ordinance  are 
conferred  upon  the  Registrar. 

Rectification  of  register 

56.  (1)  Any  application  for  the  rectification  of  the  Regis- 
ter or  the  removal  of  any  trade  mark  from  the  Register  in 
respect  of  any  goods  which,  under  Sections  15,  39  and  40  of  this 
Ordinance,  is  to  be  made  to  the  Court,  may,  at  the  option  of  the 
applicant,  be  made  in  the  first  instance  to  the  Registrar. 

(2)  Provided  that  no  such  application  shall  be  made  other- 
wise than  to  the  Court  where  an  action  concerning  the  trade 
mark  in  question  is  pending. 

(3)  The  Registrar  may,  at  any  stage  of  the  proceedings, 
refer  any  such  application  to  the  Court  or  he  may,  after  hearing 
the  parties,  determine  the  question  between  them,  subject  to 
appeal  to  the  Court. 

Removal  of  trade  marks  from  Part  A  to  Part  B 

(4)  In  any  proceedings  for  rectification  of  the  Register 
under  this  Ordinance  the  Court  or  the  Registrar  shall,  in  addi- 
tion to  the  other  powers  conferred  by  this  Ordinance,  have 
power  to  direct  a  trade  mark  entered  in  Part  A  of  the  Register 
to  be  removed  to  Part  B  of  the  Register. 

PART  II 

Exercise  of  discretionary  power  of  Registrar 

57.  Where  any  discretionary  or  other  power  is  given  to 
the  Registrar  by  this  Ordinance  or  Rules  made  thereunder,  he 
shall  not  exercise  that  power  adversely  to  the  applicant  for 
registration  or  the  registered  proprietor  of  the  trade  mark  in 
question  without  (if  duly  required  to  do  so  within  the  prescribed 
time)  giving  such  applicant  or  registered  proprietor  an  oppor- 
tunity of  being  heard. 


TANGANYIKA  TERRITORY  917 

Appeal  from  Registrar 

58.  Except  where  expressly  given  by  the  provisions  of  this 
Ordinance  or  Rules  thereunder,  there  shall  be  no  appeal  from 
a  decision  of  the  Registrar,  but  the  Court,  in  dealing  with  any 
question  of  the  rectification  of  the  Register  (including  all  ap- 
plications under  the  provisions  of  Section  39  of  this  Ordinance), 
shall  have  power  to  review  any  decision  of  the  Registrar  relat- 
ing to  the  entry  in  question  or  the  correction  sought  to  be  made. 

Recognition  of  agents 

59.  Where  by  this  Ordinance  any  act  has  to  be  done  by  or 
to  any  person  in  connexion  with  a  trade  mark  or  proposed  trade 
mark  or  any  proceeding  relating  thereto,  such  act  may  under 
and  in  accordance  with  Rules  made  under  this  Ordinance  or  in 
particular  cases  by  special  leave  of  the  Registrar  be  done  by 
or  to  an  agent  of  such  party  duly  authorised  in  the  prescribed 
manner. 

Power  to  make  Rules 

60.  (1)  Subject  to  the  provisions  of  this  Ordinance  the 
Governor  may  from  time  to  time  make  such  Rules,  prescribe 
such  forms,  and  generally  do  such  things  as  he  may  deem  ex- 
pedient— 

(a)  For  regulating  the  practice  under  this  Ordinance; 

(b)  For  classifying  goods  for  the  purposes  of  registration 
of  trade  marks; 

(c)  For  making  or  requiring  duplicates  of  trade  marks  and 
other  documents ; 

(d)  For  securing  and  regulating  the  publishing  and  selling 
or  distributing  in  such  manner  as  the  Governor  may  think  fit, 
of  copies  of  trade  marks  and  other  documents ; 

(e)  Generally,  for  regulating  all  things  by  this  Ordinance 
placed  under  the  direction  or  control  of  the  Registrar. 

(2)  Rules  made  under  this  section  shall,  whilst  in  force,  be 
of  the  same  effect  as  if  they  were  contained  in  this  Ordinance. 

(3)  Until  other  provision  is  made  the  Rules  and  forms  in 
force  and  prescribed  in  England  under  the  Trade  Marks  Acts, 
1905  to  1919,  at  the  date  of  this  Ordinance  shall  with  such  modi- 
fications as  circumstances  may  require  be  deemed  to  be  Rules 
made  and  forms  prescribed  under  this  Ordinance. 

Fees 

61.  There  shall  be  paid  in  respect  of  applications  and 
registrations  and  other  matters  under  this  Ordinance,  such  fees 
as  the  Governor  may  from  time  to  time  prescribe. 

Standardization,  etc.,  trade  marks 

62.  Where  any  association  or  person  undertakes  to  certify 


918  TANGANYIKA  TERRITORY 

the  origin,  material,  mode  of  manufacture,  quality,  accuracy  or 
other  characteristic  of  any  goods  by  mark  used  upon  or  in  con- 
nexion with  such  goods,  the  Governor,  if  and  so  long  as  he  is 
satisfied  that  such  association  or  person  is  competent  to  certify 
as  aforesaid,  may,  if  he  shall  judge  it  to  be  to  the  public  ad- 
vantage, permit  such  association  or  person  to  register  such 
trade  mark  in  respect  of  such  goods,  whether  or  not  such  asso- 
ciation or  person  be  a  trading  association  or  trader  or  possessed 
of  a  goodwill  in  connexion  with  such  certifying.  When  so  regis- 
tered such  trade  mark  shall  be  deemed  in  all  respects  to  be  a 
registered  trade  mark  and  such  association  or  person  to  be  the 
proprietor  thereof,  save  that  such  trade  mark  shall  be  trans- 
missible or  assignable  only  by  permission  of  the  Governor. 

Offences 

63.  (1)  If  any  person  makes  or  causes  tojbe  made  a  false 
entry  in  the  Register  kept  under  this  Ordinance  or  a  writing 
falsely  purporting  to  be  a  copy  of  an  entry  in  such  Register,  or 
produces  or  tenders  or  causes  to  be  produced  or  tendered  in 
evidence  any  such  writing,  knowing  the  entry  or  writing  to  be 
false,  he  shall  be  guilty  of  an  offence  and  on  conviction  shall 
be  liable  to  imprisonment  of  either  description  for  a  term  not 
exceeding  five  years. 

(2)  Any  person  who  represents  any  trade  mark  as  regis- 
tered which  is  not  so  shall  be  guilty  of  an  offence  and  liable  on 
conviction  to  a  fine  not  exceeding  100  Rupees  or  Florins. 

A  person  shall  be  deemed  for  the  purposes  of  this  sub- 
section to  represent  that  a  trade  mark  is  registered  if  he  uses 
in  connexion  with  the  trade  mark  the  word  " registered"  or  any 
word  or  words  expressing  or  implying  that  registration  has 
been  obtained  for  the  trade  mark. 

Royal  Arms 

64.  If  any  person,  without  the  authority  of  His  Majesty, 
uses  in  connexion  with  any  trade,  business,  calling  or  profes- 
sion the  Royal  Arms  (or  Arms  so  closely  resembling  same  as 
to  be  calculated  to  deceive)  in  such  manner  as  to  be  calculated 
to  lead  to  the  belief  that  he  is  duly  authorised  so  to  use  the 
Royal  Arms,  or  if  any  person  without  the  authority  of  His 
Majesty  or  of  a  member  of  the  Royal  Family  uses  in  connexion 
with  any  trade,  business,  calling  or  profession  any  device,  em- 
blem or  title  in  such  manner  as  to  be  calculated  to  lead  to  the 
belief  that  he  is  employed  by  or  supplies  goods  to  His  Majesty 
or  such  member  of  the  Royal  Family,  he  shall  be  guilty  of  an 
offence  and  liable  on  conviction  to  a  fine  not  exceeding  Rupees 
or  Florins  300. 


TANGANYIKA  TERRITORY  919 

Provided  that  nothing  in  this  Section  shall  be  construed  as 
affecting  the  right,  if  any,  of  the  proprietor  of  a  trade  mark 
containing  any  such  arms,  device,  emblem  or  title  to  continue  to 
use  such  trade  mark. 

International  and  Colonial  arrangements 
65.  (1)  Where  any  person  who  has  registered  or  who  has 
applied  for  protection  for  any  trade  mark  in  the  United  King- 
dom or  in  any  foreign  state  with  the  Government  of  which  His 
Majesty  may  have  been  pleased  to  make  any  arrangement  for 
mutual  protection  of  trade  marks,  such  person  or  his  legal  rep- 
resentative or  assignee  shall  be  entitled  to  registration  of  his 
trade  mark  in  priority  to  other  applicants;  and  such  registra- 
tion shall  have  the  same  date  as  the  date  of  application  for 
protection  in  the  United  Kingdom  or  foreign  state  or  as  the 
date  of  the  commencement  of  this  Ordinance,  whichever  shall 
be  the  later. 

Provided  that 

(a)  the  application  for  registration  is  made  within  four 
months  from  the  date  of  the  commencement  of  this  Ordinance 
or  of  the  application  for  protection  in  the  United  Kingdom  or 
foreign  state;  and 

(b)  nothing  in  the  section  shall  entitle  the  proprietor  of 
a  trade  mark  to  recover  damages  for  infringements  happening 
prior  to  the  actual  date  on  which  his  trade  mark  is  registered  in 
this  Territory. 

(2)  The  registration  of  a  trade  mark  shall  not  be  invali- 
dated by  reason  only  of  the  use  of  the  trade  mark  in  the  Terri- 
tory during  the  aforesaid  period  of  four  months. 

(3)  The  application  for  the  registration  of  a  trade  mark 
under  this  Section  must  be  made  in  the  same  manner  as  an 
ordinary  application  under  this  Ordinance:  provided  that  any 
trade  mark  the  registration  of  which  has  been  duly  applied  for 
in  the  country  of  origin  may  be  registered  under  this  Ordinance. 

(4)  The  provisions  of  this  Section  shall  apply  only  in  the 
case  of  the  United  Kingdom  and  of  those  foreign  states  with 
respect  to  which  the  Governor  may  by  Proclamation  to  be  pub- 
lished in  the  Gazette  declare  them  to  be  applicable  and  so  long 
only  in  the  case  of  each  of  such  foreign  states  as  the  Proclama- 
tion continues  in  force  with  respect  to  that  state. 

(5)  Where  it  is  made  to  appear  to  the  Governor  that  the 
legislature  of  any  British  possession  has  made  satisfactory 
provision  for  the  protection  of  trade  marks  registered  in  this 
Territory,  it  shall  be  lawful  for  the  Governor  by  Proclamation 
to  apply  the  provisions  of  this  section  to  that  possession  with 


920  TANGANYIKA  TERRITORY 

such  variations  or  additions  (if  any)  as  may  be  stated  in  the 
Proclamation. 

German  trade  marks 

66.  (1)  For  the  purpose  of  fulfilling  any  obligation  im- 
posed by  the  Treaty  of  Versailles  the  Governor  may  on  the 
application  of  the  proprietor  thereof  direct  that,  notwithstand- 
ing anything  contained  in  this  Ordinance,  any  trade  mark  which 
at  the  time  of  the  separation  of  this  Territory  from  Germany 
by  virtue  of  the  aforesaid  Treaty  was  in  force  in  this  Territory 
shall  be  entered  in  the  Register  in  whichever  part  thereof  he 
shall  deem  the  more  appropriate  and  such  trade  mark  shall 
thereupon  remain  in  force  in  this  Territory  for  the  same  period 
of  time  given  it  under  German  law. 

(2)  The  application  for  the  registration  of  a  trade  mark 
under  this  Section  must  be  made  in  the  same  manner  as  an 
ordinary  application  under  this  Ordinance  and  must  be  sup- 
ported by  such  evidence  as  the  Governor  may  require. 
Provisions  as  to  Public  Holidays 

67.  Whenever  the  last  day  fixed  by  this  Ordinance,  or  by 
any  rule  for  the  time  being  in  force,  for  leaving  any  document 
with,  or  paying  any  fee  to  the  Registrar,  shall  fall  on  Sunday 
or  Public  Holiday,  it  shall  be  lawful  to  leave  such  document  or 
to  pay  such  fee  on  the  day  fixed  following  such  Sunday  or  Public 
Holiday  or  Holidays  if  two  or  more  of  them  occur  consecutively. 


TRINIDAD   AND   TOBAGO 

ORDINANCE  NO.  10  OF  MARCH  12,  1900 

Short  Title 

1.  This  Ordinance  may  be  cited  as  "The  Patents,  Designs 
and  Trade  Marks  Ordinance,  1900."* 

Appointment  of  Registrar 

2.  It  shall  be  lawful  for  the  Governor  to  appoint  a  Regis- 
trar of  Patents,  Designs  and  Trade  Marks  (in  this  Ordinance 
called  the  Registrar),  with  an  office  to  be  called  the  Registry  of 
Patents,  Designs  and  Trade  Marks  (in  this  Ordinance  called 
the  Registry),  and  until  such  appointment  be  made,  the  Regis- 
trar-General shall  be  and  perform  the  duties  of  such  Registrar, 
and  the  office  of  the  said  Registrar-General  shall  be  such  Regis- 
try, and  such  Registry  shall  be  deemed  to  be  for  all  purposes 
within  the  department  of  the  Registrar-General. 

PART  III— TRADE  MARKS 

Register  of  Trade  Marks 

25.  There  shall  be  kept  at  the  Registry  a  book  called  "The 
Register  of  Trade  Marks"  wherein  shall  be  entered  the  names 
and  addresses  of  proprietors  of  registered  trade  marks,  notifica- 
tions of  assignments,  charges  and  transmissions  of  trade  marks, 
and  such  other  matters  as  may  be  from  time  to  time  prescribed. 

Application  for  Registration 

26.  (1)  The  Registrar  may,  on  application  by  or  on  behalf 
of  any  person  claiming  to  be  the  proprietor  of  a  trade  mark, 
and  on  payment  of  the  prescribed  fee,  register  the  trade  mark. 

(2)  The  application  must  be  made  in  form  D  in  the  First 
Schedule  to  this  Ordinance  or  in  such  other  form  as  may  be 
from  time  to  time  prescribed,  and  must  be  left  at  the  Registry 
in  the  prescribed  manner. 

(3)  The  application  must  be  accompanied  by  the  prescribed 
number  of  representations  of  the  trade  mark,  and  must  state 
the  particular  class  of  goods  or  classes  of  goods  in  connexion 
with  which  the  applicant  desires  the  trade  mark  to  be  registered. 

(4)  The  Registrar  may,  if  he  thinks  fit,  refuse  to  register 
a  trade  mark,  subject  to  appeal  to  a  Judge  in  Chambers. 

Limit  of  Time  for  Proceeding  with  Application 

27.  Where  the  registration  of  a  trade  mark  shall  not  be 

*  Matter  relating  to  patents  and  designs  is  omitted. 


922  TRINIDAD  AND  TOBAGO 

completed  within  twelve  months  from  the  date  of  the  application 
by  reason  of  default  on  the  part  of  the  applicant  the  application 
shall  be  deemed  to  be  abandoned. 

Conditions  of  Registration  of  Trade  Mark 

28.  (1)  For  the  purposes  of  this  Ordinance  a  trade  mark 
must  consist  of  or  contain  at  least  one  of  the  following  essen- 
tial particulars: 

(a)  A  name  of  an  individual  or  firm  printed,  impressed,  or 
woven  in  some  particular  and  distinctive  manner ;  or 

(b)  A  written  signature  or  copy  of  a  written  signature  of 
the  individual  or  firm  applying  for  registration  thereof  as  a 
trade  mark;  or 

(c)  A  distinctive  device,  mark,  brand,  heading,  label,  or 
ticket;  or 

(d)  An  invented  word  or  invented  words ;  or 

(e)  A  word  or  words  having  no  reference  to  the  character 
or  quality  of  the  goods,  and  not  being  a  geographical  name. 

(2)  There  may  be  added  to  any  one  or  more  of  the  essen- 
tial particulars  mentioned  in  this  Section  any  letters,  words,  or 
figures,  or  combination  of  letters,  words,  or  figures,  or  of  any  of 
them,  but  the  applicant  for  registration  of  any  such  additional 
matter  must  state  in  his  application  the  essential  particulars 
of  the  trade  mark,  and  must  disclaim  in  his  application  any 
right  to  the  exclusive  use  of  the  added  matter,  and  a  copy  of 
the  statement  and  disclaimer  shall  be  entered  on  the  register. 

(3)  Provided  as  follows: 

(i)  A  person  need  not  under  this  section  disclaim  his  own 
name  or  the  foreign  equivalent  thereof,  or  his  place  of  business, 
but  no  entry  of  any  such  name  shall  affect  the  right  of  any 
owner  of  the  same  name  to  use  that  name  or  the  foreign  equiva- 
lent thereof. 

(ii)  Any  special  and  distinctive  word  or  words,  letter, 
figure,  or  combination  of  letters  or  figures,  or  of  letters  and 
figures,  used  as  a  trade  mark  either  in  the  Colony,  or  elsewhere, 
before  the  thirteenth  day  of  August,  1875,  may  be  registered 
as  a  trade  mark. 

Connexion  of  Trade  Mark  with  Goods 

29.  A  trade  mark  must  be  registered  for  particular  goods 
or  classes  of  goods. 

Registration  of  a  Series  of  Marks 

30.  When  a  person  claiming  to  be  the  proprietor  of  several 
trade  marks  which,  while  resembling  each  other  in  the  material 
particulars  thereof,  yet  differ  in  respect  of  (a)  the  statement 
of  the  goods  for  which  they  are  respectively  used  or  proposed 


TRINIDAD  AND  TOBAGO  923 

to  be  used,  or  (b)  statements  of  numbers,  or  (c)  statements  of 
price,  or  (d)  statements  of  quality,  or  (e)  statements  of  names 
of  places,  seeks  to  register  such  trade  marks,  they  may  be  regis- 
tered as  a  series  in  one  registration.  A  series  of  trade  marks 
shall  be  assignable  and  transmissible  only  as  a  whole,  but  for 
all  other  purposes  each  of  the  trade  marks  composing  a  series 
shall  be  deemed  and  treated  as  registered  separately. 
Trade  Maries  May  Be  Registered  in  Any  Colour 

31.  A  trade  mark  may  be  registered  in  any  colour,  and 
such  registration  shall  (subject  to  the  provisions  of  this  Ordi- 
nance) confer  on  the  registered  owner  the  exclusive  right  to 
use  the  same  in  that  or  any  other  colour. 

32.  Every  application  for  registration  of  a  trade  mark 
under  this  Ordinance  shall  as  soon  as  may  be  after  its  receipt 
be  advertised  by  the  Registrar  in  the  Royal  Gazette  of  the 
Colony,  unless  he  shall  refuse  to  entertain  the  application. 

Opposition  to  Registration 

33.  (1)  Any  person  may  within  three  months  of  the  first 
advertisement  of  the  application  give  notice  in  duplicate  to  the 
Registrar  of  opposition  to  registration  of  the  trade  mark  and 
the  Registrar  shall  send  one  copy  of  such  notice  to  the  applicant. 

(2)  Within  one  month  after  receipt  of  such  notice  or  such 
further  time  as  the  Registrar  may  allow,  the  applicant  may 
send  to  the  Registrar  a  counter-statement  in  duplicate  of  the 
grounds  on  which  he  relies  for  his  application,  and  if  he  does 
not  do  so,  shall  be  deemed  to  have  abandoned  his  application. 
Conflicting  Claims  to  Registration 

34.  On  the  receipt  of  such  counter-statement  or  where 
each  of  several  persons  claims  to  be  registered  as  proprietor 
of  the  same  trade  mark  the  Registrar  may  refuse  to  register 
any  of  them  until  their  rights  have  been  determined  by  the 
Court. 

Restrictions  on  Registration 

35.  (1)  Except  where  the  Court  has  decided  that  two  or 
more  persons  are  entitled  to  be  registered  as  proprietors  of 
the  same  trade  mark,  the  Registrar  shall  not  register  in  respect 
of  the  same  goods  or  description  of  goods  a  trade  mark  identical 
with  one  already  on  the  register  with  respect  to  such  goods  or 
description  of  goods. 

(2)  Except  as  aforesaid,  the  Registrar  shall  not  register 
with  respect  to  the  same  goods  or  description  of  goods  a  trade 
mark  having  such  resemblance  to  a  trade  mark  already  on  the 
register  with  respect  to  such  goods  or  description  of  goods  as 
to  be  calculated  to  deceive. 


924  TRINIDAD  AND  TOBAGO 

Words  Likely  to  Deceive  Not  to  be  Registered 

36.  It  shall  not  be  lawful  to  register  as  part  of  or  in  com- 
bination with  a  trade  mark  any  words  the  use  of  which  would, 
by  reason  of  their  being  calculated  to  deceive  or  otherwise,  be 
deemed  disentitled  to  protection  in  an  English  Court  of  Justice. 

Saving  for  Power  to  Provide  Entry  on  Register  of  Common 
Marks  as  Additions  to  Trade  Marks 

37.  (1)  Nothing  in  this  Ordinance  shall  be  construed  to 
prevent  the  Registrar  entering  on  the  register  in  the  prescribed 
manner,  and  subject  to  the  prescribed  conditions,  as  an  addition 
to  any  trade  mark,  any  distinctive  word  or  combination  of 
words,  or,  in  the  case  of  a  trade  mark  used  before  the  13th  day 
of  August,  1875,  in  this  Colony  or  elsewhere,  any  distinctive 
device,  mark,  brand,  heading,  label,  ticket,  letter,  or  figure,  or 
combination  of  letters,  words,  or  figures,  though  the  same  is 
common  to  the  trade  in  the  goods  with  respect  to  which  the 
application  is  made. 

(2)  The  applicant  for  registration  of  any  such  addition 
must,  however,  state  in  his  application  the  essential  particulars 
of  the  trade  mark,  and  must  disclaim  in  his  application  any 
right  to  the  exclusive  use  of  the  added  matter,  and  a  copy  of 
the  statement  and  disclaimer  shall  be  entered  on  the  register. 
Provided  that  a  person  need  not  under  this  Section  disclaim 
his  own  name  or  the  foreign  equivalent  thereof  or  his  place  of 
business,  but  no  entry  of  any  such  name  shall  affect  the  right 
of  any  owner  of  the  -same  name  to  use  that  name  or  the  foreign 
equivalent  thereof. 

(3)  Any  device,  mark,  brand,  heading,  label,  ticket,  letter, 
word,  figure,  or  combination  of  letters,  words  or  figures,  which 
was  or  were  before  the  13th  day  of  August,  1875,  publicly  used 
by  more  than  three  persons  in  this  Colony  or  elsewhere,  on  the 
same  or  a  similar  description  of  goods  shall  for  the  purposes 
of  this  Section  be  deemed  common  to  the  trade  in  such  goods. 

Application  to  Equal  Public  Use  of  Trade  Mark 

38.  Application  for  registration  of  a  trade  mark  shall  be 
deemed  to  be  equivalent  to  public  use  of  the  trade  mark,  and 
the  date  of  the  application  shall  for  the  purposes  of  this  Ordi- 
nance be  deemed  to  be,  and  as  from  the  first  day  of  January, 
1876,  to  have  been  the  date  of  the  registration. 

Right  of  First  Proprietor  to  Exclusive  use  of  Trade  Mark 

39.  The  registration  of  a  person  as  proprietor  of  a  trade 
mark  shall  be  prima  facie  evidence  of  his  right  to  the  exclusive 
use  of  the  trade  mark,  and  shall,  after  the  expiration  of  five 
years  from  the  date  of  the  registration,  be  conclusive  evidence 


TRINIDAD  AND  TOBAGO  925 

of  his  right  to  the  exclusive  use  of  the  trade  mark,  subject  to 
the  provisions  of  this  Ordinance. 

Infringement  of  a  Trade  Mark  May  be  Restrained  and 
Damages  Recovered 

40.  The  infringement  of  a  trade  mark  may  be  restrained, 
and  damages  for  such  infringement  recovered  in  an  action  in 
the  Supreme  Court,  if  such  trade  mark  has  been  registered,  or 
if  registration  thereof  in  the  register  of  trade  marks  has  been 
refused,  but  in  no  other  case.    The  Registrar  may  on  request, 
and  on  payment  of  the  prescribed  fee,  grant  a  certificate  that 
such  registration  has  been  refused. 

Plaintiff  to  Have  Full  Costs  in  Subsequent  Action 

41.  In  an  action  for  infringement  of  a  registered  trade 
mark  the  Court  or  a  Judge  may  certify  that  the  right  to  the 
exclusive  use  of  the  trade  mark  came  in  question,  and  if  the 
Court  or  a  Judge  so  certifies,  then  in  any  subsequent  action  for 
infringement  the  plaintiff  in  the  action,  on  obtaining  a  final 
order  or  judgment  in  his  favour,  shall  have  his  full  costs, 
charges,  and  expenses  as  between  solicitor  and  client,  unless 
the  Court  or  Judge  trying  the  subsequent  action  certifies  that 
he  ought  not  to  have  the  same. 

Assignment  and  Transmission  of  Trade  Mark 

42.  A  trade  mark,  when  registered,  shall  be  assigned  and 
transmitted  only  in  connexion  with  the  goodwill  of  the  business 
concerned  in  the  particular  goods  or  classes  of  goods  for  which 
it  has  been  registered,  and  shall  be  determinable  with  that 
goodwill. 

Alteration  of  Registered  Mark 

43.  (1)  The  registered  proprietor  of  any  trade  mark  may 
apply  to  the  Court  for  leave  to  add  to  or  alter  such  mark  in 
any  particular,  not  being  an  essential  particular  within  the 
meaning  of  this  Ordinance,  and  the  Court  may  refuse  or  grant 
leave  on  such  terms  as  it  may  think  fit. 

(2)  Notice  of  any  intended  application  to  the  Court  under 
this  Section  shall  be  given  to  the  Registrar  by  the  applicant, 
and  the  Registrar  shall  be  entitled  to  be  heard  on  the  appli- 
cation. 

(3)  If  the  Court  grants  leave,  the  Registrar  shall  on  proof 
thereof,  and  on  payment  of  the  prescribed  fee,  cause  the  register 
to  be  altered  in  conformity  with  the  order  of  leave. 

Removal  of  Trade  Mark  After  Fourteen  Years  Unless 

Fee  Paid 

44.  (1)  At  the  expiration  of  fourteen  years  from  the  date 
of  the  registration  the  trade  mark  shall  be  removed  from  the 


926  TRINIDAD  AND  TOBAGO 

register  unless  the  proprietor  pays  to  the  Registrar  before  the 
expiration  of  such  fourteen  years  the  prescribed  fee,  and  so 
from  time  to  time  at  the  expiration  of  every  period  of  four- 
teen years. 

Provided  that  three  months  at  least  before  the  expiration 
of  such  period  the  Registrar  shall  give  due  notice  of  such  ap- 
proaching expiration  to  the  proprietor  of  such  trade  mark. 

(2)  Where  after  the  said  three  months  a  trade  mark  has 
been  removed  from  the  register  for  non-payment  of  the  pre- 
scribed fee,  the  Registrar  may,  if  satisfied  that  it  is  just  so  to 
do,  restore  such  trade  mark  to  the  register  on  payment  of  the 
prescribed  additional  fee. 

(3)  Where  a  trade  mark  has  been  removed  from  the  regis- 
ter for  non-payment  of  the  fee  or  otherwise,  such  trade  mark 
shall  nevertheless,  for  the  purpose  of  any  application  for  regis- 
tration during  the  one  year  next  after  the  date  of  such  removal, 
be  deemed  to  be  a  trade  mark  which  is  already  registered,  un- 
less it  is  shown  to  the  satisfaction  of  the  Registrar  that  the 
non-payment  of  the  fee  arises  from  the  death  or  bankruptcy  of 
the  registered  proprietor,  or  from  his  having  ceased  to  carry 
on  business,  and  that  no  person  claiming  under  that  proprietor 
or  under  his  bankruptcy  is  using  the  trade  mark. 

PART  IV— GENERAL 

Trusts  Not  to  be  Entered  in  Registers 

45.  There  shall  not  be  entered  in  any  register  kept  under 
this  Ordinance,  or  be  receivable  by  the  Registrar,  any  notice  of 
any  trust  expressed,  implied  or  constructive. 

Refusal  to  Register  Trade  Mark,  &c.,  in  Certain  Cases 

46.  The  Registrar  may  refuse  ...  to  register  a  ... 
trade  mark  which  is,  or  of  which  the  use  would  be,  scandalous 
or  contrary  to  law  or  morality. 

Trade  Mark  Deemed  to  be  Registered  When  Name  of  Pro- 
prietor Entered  in  Register 

47.  Any  .  .  .  trade  mark  shall  be  deemed  to  be  registered 
when  the  name  of  any  person  is  entered,  as  the  proprietor 
thereof,  in  the  .  .  .  register  of  trade  marks  .... 

Entry  of  Assignments  and  Transmissions  in  Registers 

48.  Where  a  person  becomes  entitled  by  assignment,  trans- 
mission, or  other  operation  of  law  .   .   .  to  a  registered  trade 
mark,  the  Registrar  shall,  on  request,  and  on  proof  of  title, 
cause  the  name  of  such  person  to  be  entered  as  proprietor  of 
the  .  .  .  trade  mark,  in  the  register  of  ...  trade  marks  .... 
The  person  for  the  time  being  entered  in  the  register  of  ... 
trade  marks,  as  proprietor  of  a  .   .   .  trade  mark  .   .   .  shall, 


TRINIDAD  AND  TOBAGO  927 

subject  to  the  provisions  of  this  Ordinance  and  to  any  rights, 
appearing  from  such  register  to  be  vested  in  any  other  person, 
have  power  absolutely  to  assign,  grant  licenses  as  to,  or  other- 
wise deal  with  the  same,  and  to  give  effectual  receipts  for  any 
consideration  for  such  assignment,  license  or  dealing.  Provided 
that  any  equities  in  respect  of  such  .  .  .  trade  mark  may  be 
enforced  in  like  manner  as  in  respect  of  any  other  personal 
property:  Provided  also  that  the  priority  of  all  assignments 
and  charges  shall,  as  regards  purchasers  for  value  without 
notice,  be  determined  by  priority  of  registration. 

Inspection  of  and  Extracts  from  Register 

49.  Every  register  kept  under  this  Ordinance  shall  be 
prima  facie  evidence  of  all  matters  duly  entered  therein,  and 
every  such  register  .   .   .  open  to  the  inspection  of  the  public 
on  payment  of  the  prescribed  fee,  subject  to  the  provisions  of 
this  Ordinance  and  to  such  regulations  as  may  be  prescribed; 
and  certified  copies,  sealed  with  the  seal  of  the  Registry,  of  any 
entry  in  such  register  or  of  any  such  specification,  shall  be 
given  to  any  person  requiring  the  same  on  payment  of  the  pre- 
scribed fee :  Provided  that  whenever  any  .  .  .  extract  includes 
any  tracing,  drawing,  or  diagram,  an  additional  fee  for  any 
copy  thereof  shall  be  paid  equal  to  the  cost  of  preparing  such 
tracing,  drawing,  or  diagram. 

Power  for  Registrar  to  Correct  Clerical  Errors,  &c., 
Amendment  of  Application 

50.  The  Registrar  may,  on  request  in  writing,  accompanied 
by  the  prescribed  fee: 

(a)  Correct  any  clerical  error  in  or  in  connection  with  an 
application  .  .  .  for  registration  of  a  design  or  trade  mark ;  or 

(b)  Correct  any  clerical  error  in  the  name,  style,  or  ad- 
dress of  the  registered  proprietor  of  a  .  .  .  trade  mark ;  or 

(c)  Cancel  the  entry  or  part  of  the  entry  of  a  trade  mark 
on  the  register:   Provided  that  the  applicant  accompanies  his 
request  by  a  statutory  declaration  made  by  himself  stating  his 
name,  address  and  calling,  and  that  he  is  the  person  whose 
name  appears  on  the  register  as  the  proprietor  of  the  said 
trade  mark. 

(d)  Permit  an  applicant  for  registration  of  a  .   .   .  trade 
mark  to  amend  his  application  by  omitting  any  particular  goods 
or  classes  of  goods  in  connexion  with  which  he  has  desired  the 
.  .  .  trade  mark  to  be  registered. 

Certificate  of  Registrar  to  be  Evidence 

51.  A  certificate  purporting  to  be  under  the  hand  of  the 
Registrar  as  to  any  entry,  matter  or  thing  which  he  is  author- 


928  TRINIDAD  AND  TOBAGO 

ized  by  this  Ordinance,  or  any  general  rules  made  thereunder, 
to  make  or  do,  shall  be  prima  facie  evidence  of  the  entry  having 
been  made,  and  of  the  contents  thereof,  and  of  the  matter  or 
thing  having  been  done  or  left  undone. 

Orders  Affecting  Registrar  May  be  Made  by  a  Judge 

52.  An  order  requiring  the  Registrar  to  do,  or  abstain 
from  doing,  anything  under  this  Ordinance  may  be  made  by  a 
Judge  on  a  summons  in  Chambers. 

Court  or  Judge  May  Make  Orders,  Impose  Terms,  &c. 

53.  In  any  proceedings  under  this  Ordinance  the  Court 
or  a  Judge,  as  the  case  may  be,  may  at  any  time  make  such 
orders  for  an  injunction,  inspection,  or  account,  impose  such 
terms,  and  give  such  directions  as  to  the  order  in  which  the 
parties  shall  be  heard,  and  the  procedure  under  this  Ordinance 
generally,  as  the  Court  or  Judge  shall  see  fit. 

Declaration  by  Infant,  Lunatic,  &c. 

54.  If  any  person  is  by  reason  of  infancy,  lunacy  or  other 
disability,  incapable  of  making  any  declaration  or  doing  any- 
thing required  or  permitted  by  this  Ordinance  or  by  any  rules 
made  under  the  authority  of  this  Ordinance,  then  the  guardian 
or  committee  (if  any)  of  such  incapable  person,  or  if  there  be 
none,  any  person  appointed  by  any  Court  or  Judge  possessing 
jurisdiction  in  respect  of  the  property  of  persons  under  dis- 
ability, upon  the  petition  of  any  person  on  behalf  of  such  in- 
capable person,  or  of  any  other  person  interested  in  the  making 
of  such  declaration  or  doing  such  thing,  may  make  such  decla- 
ration, or  a  declaration  as  nearly  as  possible  corresponding 
thereto  as  circumstances  permit,  and  do  such  thing  in  the  name 
and  on  behalf  of  such  incapable  persons,  and  all  acts  done  by 
such  substitute  shall  for  the  purposes  of  this  Ordinance  be  as 
effectual  as  if  done  by  the  person  for  whom  he  is  substituted. 

Publication  Quarterly  of  List  of  Trade  Marks  Registered 

55.  The  Registrar  shall  cause  to  be  published  during  each 
quarter  in  the  Royal  Gazette  a  list  of  all  ...  trade  marks  regis- 
tered during  the  preceding  quarter,  and  any  further  informa- 
tion that  he  may  deem  generally  useful  or  important. 

Transmission  of  Copies  of  Specification,  &c. 

56.  Copies  of  ...  all  published  lists  of  registered  .   .   . 
trade  marks  shall  be  transmitted  to  the  Controller  of  Patents, 
Designs,  and  Trade  Marks  in  England. 

Power  to  Make  Rules  for  Classifying  Goods  and  Regulating 
Business  of  Registry  Fees,  Payment  of 

57.  The  Registrar,  with  the  sanction  of  the  Governor,  may 
from  time  to  time  make  such  general  rules  and  do  such  things 


TRINIDAD  AND  TOBAGO  929 

as  he  may  think  expedient  for  regulating  the  practice  of  regis- 
tration under  this  Ordinance,  for  classifying  goods  for  the  pur- 
poses of  ...  trade  marks,  for  prescribing  the  fees  to  be  paid 
under  this  Ordinance,  or  for  any  other  purpose  which  may  be 
or  be  deemed  necessary  for  the  carrying  out  of  the  provisions 
of  this  Ordinance;  and  shall  also  have  power  to  alter,  add  to, 
amend  or  revoke  any  such  rules. 

Subject  to  the  Provisions  hereinbefore  contained,  the  fees 
mentioned  in  the  Second  Schedule  to  this  Ordinance  shall  be 
paid  to  the  Registrar. 

Any  rules  made  in  pursuance  of  this  Section  shall  be  laid 
before  the  Legislative  Council  and  shall  be  published  in  the 
Royal  Gazette. 

Declaration 

58.  Any  declaration  required  to  be  made  under  this  Ordi- 
nance may  be  taken  by  the  Registrar. 

Interpretation 

59.  In  this  Ordinance: 

"Person"  includes  a  body  corporate. 

"Court"  means  the  Supreme  Court  of  Trinidad  and 
Tobago. 

"Judge"  means  a  Judge  of  the  Supreme  Court. 

"Law  Officer"  means  Her  Majesty's  Attorney-General  or 
Solicitor-General  in  this  Colony. 

"Registrar"  shall  include  any  Deputy  Registrar  or  person 
acting  under  the  authority  of  such  Registrar. 

"Registered"  means  registered  in  ...  the  register  of 
trade  marks  .  .  .  :  and  "Registration"  has  a  corresponding 
meaning. 

"Prescribed"  means  prescribed  by  any  of  the  Schedules 
to  or  Rules  made  under  the  provisions  of  this  Ordinance,  or  by 
any  other  Ordinance  applicable  to  the  case. 

"Class"  means  prescribed  class. 

"Certified"  means  certified  in  accordance  with  the  provi- 
sions of  the  Ordinance  No.  9  of  1892. 

Repeal 

60.  The  Ordinances  Nos.  40  of  1894  and  11  of  1897  are 
hereby  repealed. 

Passed  in  Council  this  twelfth  day  of  March,  in  the  year  of 
our  Lord  one  thousand  nine  hundred. 


930  TRINIDAD  AND  TOBAGO 

ORDINANCE  OF  MAY  15,  1913 

AN  ORDINANCE  TO  AMEND  THE  PATENTS,  DESIGNS  AND  TRADE 

MARKS  ORDINANCE,  No.  76 

Short  Title 

1.  This  Ordinance  may  be  cited  as  the  Patents,  Designs 
and  Trade  Marks  (Amendment)  Ordinance,  1913. 

Standardization,  etc.,  Trade  Marks 

2.  Where  any  association  or  person  undertakes  the  exam- 
ination of  any  goods  in  respect  of  origin,  material,  mode  of 
manufacture,  quality,  accuracy,  or  other  characteristic,  and 
certifies  the  result  of  such  examination  by  mark  used  upon  or 
in  connexion  with  such  goods,  the  Governor  may,  if  he  shall 
judge  it  to  be  to  the  public  advantage,  permit  such  association 
or  person  to  register  such  mark  as  a  trade  mark  in  respect  of 
such  goods,  whether  or  not  such  association  or  person  be  a 
trading  association  or  trader  or  possessed  of  a  goodwill  in  con- 
nexion with  such  examination  and  certifying.    When  so  regis- 
tered such  trade  mark  shall  be  deemed  in  all  respects  to  be  a 
registered  trade  mark,  and  such  association  or  person  to  be  the 
proprietor  thereof,  save  that  such  trade  mark  shall  be  trans- 
missible or  assignable  only  by  permission  of  the  Governor. 

Passed  in  Council  this  thirtieth  day  of  April,  in  the  year 
of  Our  Lord  one  thousand  nine  hundred  and  thirteen. 


TUNIS 

DECREE  OF  JUNE  3,  1889,  AS  AMENDED  BY  DECREES 
OF  OCTOBER  22, 1892,  AND  APRIL  7,  1908 

TITLE  I— RIGHT  OF  OWNERSHIP  IN  TRADE  MARES 
ARTICLE  1.  A  mark  of  manufacture  or  of  commerce  is  op- 
tional. However,  decrees  may,  in  exceptional  cases,  declare  it 
obligatory  for  products  that  they  distinguish.  There  shall  be 
considered  as  marks  of  manufacture  or  of  commerce:  names 
under  a  distinctive  form,  denominations,  emblems,  imprints, 
stamps,  seals,  vignettes,  reliefs,  letters,  ciphers,  envelopes,  and 
all  other  signs  serving  to  distinguish  the  products  of  a  factory 
or  the  objects  of  a  line  of  business. 

ART.  2.  No  person  may  claim  the  exclusive  ownership  of 
a  mark  unless  he  has  deposited  in  the  Clerk's  Office  of  the  Tribu- 
nal of  his  domicile : 

1)  Three  copies  of  the  design  of  this  mark; 

2)  A  typographic  cliche  (electrotype)  of  this  mark. 

TITLE  II — DEPOSIT 

ART.  3.  The  deposit  that  manufacturers,  merchants,  or 
agrarians,  may  make  of  their  marks  in  the  Clerk's  Office  of  the 
Tribunal  of  their  domicile  in  order  to  enjoy  the  rights  emanat- 
ing from  the  present  decree  shall  be  subject  to  the  following 
provisions : 

ART.  4.  The  deposit  must  be  effected  by  the  party  inter- 
ested or  by  his  special  attorney.  The  power  of  attorney  may  be 
under  private  signature,  without  there  being  need  of  having  it 
legalized.  The  design  to  be  furnished  shall  consist  of  three 
copies  upon  plain  paper,  of  a  drawing,  of  an  engraving,  or  of  a 
print,  representing  the  mark  adopted.  The  paper  shall  form 
a  square  of  18  centimetres,  the  design  part  of  which  shall  occupy 
the  center. 

If  the  mark  is  in  intaglio  or  in  relief  upon  the  goods ;  if  it 
has  had  to  be  reduced  in  order  to  not  exceed  the  dimensions  of 
the  paper,  or  if  it  presents  some  other  peculiarity,  the  depositor 
shall  so  indicate  upon  the  three  copies,  either  by  one  or  more 
figures  of  detail,  or  by  means  of  an  explicative  legend.  These 
indications  must  occupy  the  left  side  of  the  paper  upon  which 
the  mark  figures.  The  right  side  is  reserved  for  the  mentions 
prescribed  by  Art.  6. 

ART.  5.  One  of  the  three  copies  of  the  mark  shall  be  pasted 
by  the  Clerk  on  one  of  the  sheets  of  a  Register  kept  to  this  effect 


932  TUNIS 

and  in  the  order  of  presentation.  The  second  shall  be  trans- 
mitted within  five  days,  at  latest,  to  the  Director  General  of 
Agriculture,  Commerce  and  Colonization  (Bureau  of  Commer- 
cial and  Industrial  Affairs)  in  order  to  be  placed  in  the  Archives. 
The  third  shall  be  forwarded  to  the  depositor  provided  with  the 
vise  of  the  Clerk  bearing  the  indication  of  the  day  and  the  hour 
of  the  deposit. 

The  Register  shall  be  of  plain  paper,  of  the  format  of  24 
centimetres  in  width  by  40  in  height,  annotated  and  initialed 
by  the  President  of  the  Tribunal  or  by  a  Deputy  Judge. 

ART.  6.  The  Clerk  shall  enter  a  proces-verbal  of  the  de- 
posit, in  the  order  of  presentation,  in  the  Register,  annotated 
and  initialed  as  is  indicated  in  the  preceding  article.  In  this 
proces-verbal  he  shall  indicate: 

1)  The  day  and  the  hour  of  the  deposit; 

2)  The  name  of  the  proprietor  of  the  mark  and  that  of  his 
attorney ; 

3)  The  calling  of  the  proprietor,  his  domicile,  and  the  class 
of  industry  for  which  he  intends  to  make  use  of  the  mark.  Each 
proces-verbal  shall  bear  a  serial  number.    This  number  shall 
likewise  be  written  upon  the  three  copies,  as  well  as  the  name, 
the  domicile  or  the  profession  of  the  owner  of  the  mark,  the  date 
of  the  deposit  and  the  class  of  industry  for  which  the  mark  is 
intended. 

When,  on  the  expiration  of  the  period  during  which  the  de- 
posit shall  be  of  effect,  the  proprietor  of  a  mark  makes  a  new 
deposit  thereof,  this  circumstance  must  be  mentioned  upon  the 
designs  and  in  the  proces-verbal  of  the  deposit.  The  proces- 
verbal  and  the  designs  shall  be  signed  by  the  Clerk  and  by  the 
depositor  or  by  his  attorney.  A  draft  of  the  proces-verbal  shall 
be  delivered  to  the  depositor. 

ABT.  7.  There  shall  be  collected  a  fixed  fee  of  one  franc 
twenty-five  centimes  for  the  drawing  up  of  the  proces-verbal  of 
deposit  and  for  the  cost  of  transmission. 

In  the  case  of  the  deposit  of  several  marks  belonging  to  the 
same  person,  there  shall  be  drawn  up  only  one  proces-verbal, 
but  there  must  be  deposited  as  many  designs  in  triplicate  and 
as  many  cliches  as  there  are  different  marks. 

ABT.  8.  At  the  commencement  of  each  year,  the  Clerk  shall 
prepare  a  table  or  list  of  the  marks  of  which  he  has  received 
the  deposit  during  the  course  of  the  preceding  year.  This  list 
shall  be  published,  under  the  supervision  of  the  Direction  Gen- 
eral of  Agriculture,  Commerce,  and  Colonization  (Bureau  of 
Commercial  and  Industrial  Affairs),  in  the  Journal  Officiel  de  la 
Regence. 


TUNIS  933 

ART.  9.  The  Registers,  proces-verbaux,  and  lists  deposited 
with  the  Clerk's  Office,  as  well  as  the  designs  collected  at  the 
Central  Depot  of  the  Archives,  shall  be  at  the  disposition  of  the 
public  without  charge. 

AST.  10.  The  deposit  shall  be  of  effect  only  for  fifteen 
years.  The  ownership  of  the  mark  may  always  be  conserved 
for  a  new  term  of  fifteen  years,  by  means  of  a  new  deposit. 

ABT.  11.  The  dimensions  of  the  cliches  must  not  exceed 
12  centimetres  per  side. 

The  cliches  shall  be  returned  to  those  interested  after  the 
official  publication  of  the  marks  by  the  Bureau  of  Commercial 
and  Industrial  Affairs. 

TITLE  III — PROVISIONS  REGARDING  FOREIGNERS 

ART.  12.  Foreigners  that  possess  within  the  Regency  es- 
tablishments of  industry  or  of  commerce,  or  agricultural  exploi- 
tations, may  enjoy,  for  the  products  of  their  establishments,  the 
benefit  of  the  present  decree,  on  the  fulfillment  of  the  formalities 
that  it  prescribes. 

ART.  13.  Foreigners  and  Tunisians,  the  establishments  of 
whom  are  situated  without  the  Regency,  shall  enjoy  likewise  the 
benefit  of  the  present  decree  for  the  products  of  these  establish- 
ments, if,  in  the  countries  in  which  they  are  situated,  legislation 
or  international  treaties  assure  to  industrials  located  in  Tunis 
the  same  guarantees. 

ART.  14.  The  Clerk  charged,  in  the  case  provided  for  in 
Art.  4,  with  receiving  the  deposit  of  the  marks  of  foreigners  and 
Tunisians,  whose  establishments  are  situated  without  the  Re- 
gency, must  provide  therefor  a  special  Register  and  mention 
in  the  proces-verbal  of  deposit  the  country  in  which  the  indus- 
trial, commercial,  or  agricultural  establishment  of  the  owner  of 
the  mark  is  situated,  as  well  as  the  legislation  or  the  inter- 
national treaties  in  accordance  with  which  reciprocity  has  been 
established. 

TITLE  IV — PENALTIES 

ART.  15.  They  shall  be  punished  by  a  fine  of  from  30  francs 
to  1,800  francs  and  by  imprisonment  of  from  three  months  to 
three  years,  or  by  either  of  these  penalties : 

1)  That  have  counterfeited  a  mark  or  have  made  use  of  a 
counterfeit  mark ; 

2)  That  have  fraudulently  affixed  to  their  products  or  to 
the  objects  of  their  trade  a  mark  belonging  to  another ; 

3)  That  have  knowingly  sold  or  placed  on  sale  one  or  more 
products  bearing  a  counterfeit  or  fraudulent  mark. 

ART.  16.    They  shall  be  punished  by  a  fine  of  from  30  francs 


934  TUNIS 

to  1,200  francs  and  by  imprisonment  of  from  one  month  to  one 
year,  or  by  either  of  these  penalties : 

1)  That,  without  counterfeiting  a  mark,  have  made  a  fraud- 
ulent imitation  thereof  of  a  nature  to  deceive  the  purchaser,  or 
have  made  use  of  a  fraudulently  imitated  mark; 

2)  That  have  made  use  of  a  mark  bearing  indications  pos- 
sible of  deceiving  the  purchaser  as  to  the  nature  of  the  product ; 

3)  That  have  knowingly  sold  or  placed  on  sale  one  or 
several  products  bearing  a  fraudulently  imitated  mark  or  bear- 
ing indications  possible  of  deceiving  the  purchaser  as  to  the 
nature  of  the  product. 

ART.  17.  They  shall  be  punished  by  a  fine  of  from  30  francs 
to  600  francs  and  by  imprisonment  of  from  15  days  to  6  months, 
or  by  either  of  these  penalties : 

1)  That  have  not  affixed  to  their  products  a  mark  declared 
obligatory ; 

2)  That  have  sold  or  placed  on  sale  one  or  several  products 
not  bearing  the  mark  declared  obligatory  for  this  class  of  goods ; 

3)  That  have  contravened  the  dispositions  of  decrees  ren- 
dered in  the  execution  of  the  first  article  of  the  present  decree. 

ABT.  18.  Whoever  shall  have  either  affixed,  or  have  caused 
to  appear,  by  addition,  deletion,  or  by  any  alteration  whatever, 
upon  manufactured  goods,  the  name  of  a  manufacturer  other 
than  of  him  that  is  the  originator,  or  the  commercial  firm  of  a 
manufacture  other  than  that  in  which  the  said  goods  shall  have 
been  manufactured,  or,  finally,  the  name  of  a  place  other  than 
that  of  the  fabrication,  shall  be  punished,  without  prejudice  to 
damages  and  injuries,  should  there  be  occasion  therefor,  by 
imprisonment  for  three  months,  at  least,  and  one  year,  at  most, 
and  by  a  fine  that  may  not  exceed  the  quarter  of  the  restitutions 
and  damages  and  injuries,  and  which  shall  not  be  less  than 
thirty  francs. 

The  objects  of  the  crime,  or  their  value,  if  they  yet  belong 
to  the  seller,  shall  be  confiscated.  The  Tribunal  may  order  the 
posting  of  the  judgment  in  places  that  it  shall  designate  and  its 
integral  insertion  or  a  part  thereof  in  journals  that  it  shall 
designate,  the  whole  at  the  cost  of  the  condemned  party.  Every 
merchant,  commission  merchant,  or  storekeeper  whatever  shall 
be  amenable  to  the  effects  of  prosecution,  when  he  shall  have 
knowingly  exposed  for  sale  or  placed  in  circulation  objects 
marked  with  fictitious  or  altered  names. 

ART.  19.  The  penalties  established  by  the  present  decree 
may  not  be  cumulative.  The  highest  penalty  alone  shall  be  pro- 
nounced for  all  acts  anterior  to  the  first  action  for  prosecution. 

ART.  20.    The  penalties  provided  for  in  Arts.  15,  16,  and 


TUNIS  935 

17,  may  be  increased  to  double  in  case  of  repetition,  when  there 
has  been  pronounced  against  the  accused,  within  the  five  pre- 
ceding years,  a  condemnation  for  one  of  the  crimes  foreseen  by 
the  present  decree. 

ART.  21.  If  the  circumstances  appear  attenuating,  the 
Tribunal  is  authorized — even  in  case  of  repetition — to  reduce 
the  imprisonment  even  to  less  than  six  months,  and  the  fine  to 
even  less  than  30  francs.  It  may  also  separately  pronounce 
either  of  these  penalties,  and  even  substitute  fine  for  imprison- 
ment, without  it  being  in  any  case  less  than  9  francs  60  centimes. 

ART.  22.  Delinquents  may,  in  addition,  be  deprived  of  the 
right  to  participate  in  the  elections  of  the  Chambers  of  Com- 
merce during  a  term  that  shall  not  exceed  ten  years.  The  Tribu- 
nal may  order  the  posting  of  the  judgment  in  places  that  it  shall 
determine,  and  its  insertion  integrally  or  in  part  in  journals 
that  it  shall  designate,  the  whole  at  the  cost  of  the  condemned 
party. 

ART.  23.  The  confiscation  of  the  products,  the  mark  of 
which  shall  be  recognized  as  contrary  to  the  dispositions  of  Arts. 
15  and  16,  may,  even  in  case  of  acquittal,  be  pronounced  by  the 
Tribunal,  as  well  as  that  of  the  instruments  and  utensils  having 
specially  served  for  the  commission  of  the  crime.  The  Tribunal 
may  order  that  the  products  confiscated  be  delivered  to  the  pro- 
prietor of  the  mark  that  is  counterfeited  or  fraudulently  affixed 
or  imitated,  independently  of  the  most  ample  damages  and  in- 
juries, should  there  be  such.  It  shall  order,  in  any  case,  the 
destruction  of  the  marks  recognized  as  contrary  to  the  disposi- 
tions of  Arts.  15  and  16. 

ART.  24.  In  the  case  foreseen  by  the  first  two  paragraphs 
of  Art.  17,  the  Tribunal  shall  also  order  that  marks  declared 
obligatory  shall  be  affixed  to  the  products  for  which  they  are 
stipulated.  The  Tribunal  may  order  the  confiscation  of  the 
products  if  the  accused  party  has  received,  within  the  five  pre- 
ceding years,  a  conviction  for  one  of  the  crimes  foreseen  by  the 
first  two  paragraphs  of  Art.  17. 

TITLE  V — JURISDICTION 

ART.  25.  The  French  Tribunals  alone  shall  be  competent 
to  hear  all  demands  and  litigations  relative  to  the  application 
of  the  present  decree.  Civil  actions  relative  to  marks  shall  be 
lodged  with  the  Civil  Tribunals  of  First  Instance  and  adjudged 
as  summary  cases.  In  case  of  action  brought  criminally,  if  the 
accused  raises  in  his  defense  questions  relative  to  the  ownership 
of  the  mark,  the  Criminal  Police  Tribunal  shall  decide  on  the 
exception. 

ART.  26.    The  proprietor  of  a  mark  may  have  proceedings 


936  TUNIS 

taken  by  bailiffs  for  a  detailed  description,  with  or  without 
seizure,  of  the  products  that  he  alleges  as  marked  to  his  preju- 
dice in  contravention  of  the  present  decree,  by  virtue  of  an  order 
of  the  President  of  the  Civil  Tribunal  of  First  Instance  or  by 
a  Justice  of  the  Peace,  in  default  of  the  Tribunal,  in  the  place 
in  which  are  found  the  products  to  be  described  or  be  seized. 
The  order  shall  be  granted  on  simple  request  and  upon  the  pre- 
sentation of  a  proces-verbal  evidencing  the  deposit  of  the  mark. 
It  shall  contain,  should  such  be  necessary,  the  nomination  of  an 
expert  to  aid  the  bailiff  in  the  description.  When  seizure  is 
requested,  the  Judge  may  require  of  the  petitioner  a  bond  which 
he  is  bound  to  give  before  having  the  seizure  carried  out.  There 
shall  be  left  with  the  holders  of  the  objects  described  or  seized 
a  copy  of  the  order  and  of  the  instrument  evidencing  the  deposit 
of  the  bond,  should  such  have  been  required,  the  whole  on  pain 
of  avoidance  and  damages  and  injuries  against  the  bailiff. 

ART.  27.  In  default  by  the  petitioner  of  having  brought 
action,  either  civilly  or  criminally,  within  a  delay  of  fifteen  days, 
in  addition  to  one  day  for  each  five  myriametres  of  distance 
between  the  place  in  which  are  found  the  objects  described  or 
seized  and  the  domicile  of  the  party  against  whom  the  action 
has  been  brought,  the  description  or  the  seizure  shall  be  null  in 
law,  without  prejudice  to  damages  and  injuries  that  may  be 
claimed,  should  there  be  occasion  for  such. 

TITLB  VI — GENERAL  OR  TRANSITORY  PROVISIONS 
ART.  28.  All  foreign  products  bearing  either  the  mark  or 
the  name  of  a  manufacturer  residing  in  Tunis,  or  the  indication 
of  a  name  or  of  a  place  of  manufacture  of  Tunis,  shall  be  pro- 
hibited entry  and  excluded  from  transit  and  storage,  and  they 
may  be  seized  in  any  place  whatsoever,  either  through  the  over- 
sight of  the  Customs  Administration  or  on  request  of  the  Public 
Minister,  or  of  the  party  injured.  In  the  case  in  which  the 
seizure  is  made  at  the  request  of  the  Customs  Administration, 
the  proces-verbal  of  seizure  shall  be  forthwith  forwarded  to  the 
Public  Minister.  The  delay  within  which  the  action  foreseen  by 
Art.  26  shall  be  brought  under  pain  of  avoidance  of  the  seizure, 
either  by  the  party  injured  or  by  the  Public  Minister,  is  set  at 
two  months. 

The  dispositions  of  Art.  23  shall  be  applicable  to  products 
seized  in  virtue  of  the  present  article. 

ART.  29.  All  the  dispositions  of  the  present  decree  shall  be 
applicable  to  wines  and  other  beverages,  to  live  stock,  grains, 
flour,  and  generally  to  all  products  of  agriculture. 


TURKEY 

LAW  OF  MAY  11,  1888  (29  CHABAN  1305) 
SECTION  I 

THE  RIGHT  OF  OWNERSHIP  OP  MARKS 

ARTICLE  1.  There  shall  be  considered  as  marks  of  manu- 
facture and  of  commerce :  names,  denominations,  seals,  stamps, 
emblems,  letters,  ciphers,  envelopes  and  other  distinctive  signs, 
that  is  to  say  any  emblem  and  stamp  serving  to  distinguish  the 
locality  or  the  factory  from  which  emanate  articles  and  prod- 
ucts, the  names  and  denominations  of  factories,  of  manufac- 
turers and  of  those  that  trade  in  these  products. 

ART.  2.  The  employment  or  the  adoption  of  marks  of 
manufacture  or  of  commerce  is  optional.  However,  in  case  of 
need,  they  shall  become  obligatory  for  certain  products  follow- 
ing an  order  from  the  authorities.  It  is  formally  understood 
that  emblems  adopted  as  marks  must  not  be  emblems  of  sedi- 
tious character  or  contrary  to  public  morality  and  good  custom. 
Emblems  of  this  nature  may  not  be  adopted,  accordingly,  as 
marks. 

ART.  3.  No  one  may  claim  the  exclusive  ownership  of  a 
mark  and,  in  consequence,  may  not  lodge  action  against  counter- 
feiters, unless  he  has  deposited  two  specimens  of  the  design  of 
this  mark  with  the  Ministry  of  Commerce  and  of  Justice  at 
Constantinople,  and  with  the  Administrative  Council,  and  with 
the  office  of  the  Clerk  of  the  Court  of  Appeals  in  the  provinces, 
as  is  provided  for  in  Section  II. 

ART.  4.  The  mark  deposited  officially  in  accordance  with 
the  terms  of  Art.  3,  above,  shall  be  effective  only  for  fifteen 
years. 

However,  the  right  of  exclusive  ownership  of  the  mark  may 
be  renewed  by  means  of  a  new  deposit  of  the  specimens  of  the 
design  of  the  mark,  every  fifteen  years. 

The  right  of  ownership  of  a  mark  may  be  assigned  by  its 
owner  to  third  parties  with  the  authorization  of  the  Imperial 
Government  the  same  as  in  case  of  the  decease  of  the  owner, 
this  right  devolving  upon  his  heirs. 

ART.  5.  There  shall  be  collected  a  fee  of  from  two  and  one- 
half  Turkish  Pounds  to  five  Turkish  Pounds  for  the  actes 
(Ilmou-haber)  evidencing  the  deposit  of  the  specimens  of  the 
mark  and  for  delivery  to  its  owner ;  the  payment  and  the  record- 
ing of  the  fee  shall  be  effected  at  Constantinople  with  the  Minis- 


938  TURKEY 

try  of  Commerce,  and  in  the  Provinces  with  the  Administrative 
Council,  to  be  transmitted  to  said  Ministry. 

ART.  6.  Foreigners  that  carry  on  in  Turkey  an  industry 
or  business  shall  likewise  have  the  right  to  adopt  a  mark  for  the 
products  of  their  establishments  and  the  articles  of  their  com- 
merce on  condition  of  subjecting  themselves  to  the  terms  of  the 
present  Regulation ;  in  this  case  they  shall  enjoy  the  advantages 
and  guarantees  assured  by  the  said  Regulation. 

Actions  relative  to  marks  shall  be,  even  if  the  two  parties 
belong  to  foreign  nationalities,  lodged  in  accordance  with  the 
present  Regulation,  with  the  Ottoman  Tribunals,  as  is  provided 
for  in  Art.  11. 

SECTION  II 

FORMALITIES  TO  BE  FULFILLED  FOR  THE  OFFICIAL  DEPOSIT  OF 
SPECIMENS  OF  THE  DESIGN  OF  THE  MARK 

ART.  7.  Any  person  that  desires  to  deposit  his  mark  with 
the  authorities  provided  for  in  Art.  3  shall,  either  in  person  or 
through  his  attorney,  provided  with  the  required  authority  by 
virtue  of  a  power  of  attorney  in  good  and  due  form,  present  to 
the  Ministry  of  Commerce,  at  Constantinople,  and  to  the  Admin- 
istrative Council  of  the  Province,  in  the  Provinces,  two  speci- 
mens of  his  mark,  if  this  latter  consists  of  an  object  that  may 
be  affixed,  such  as  a  stamp  or  seal,  or  even  two  printed  designs 
without  any  dissimilarity  as  respects  the  original  of  the  mark 
if  this  mark  consists  in  any  other  emblem,  with  all  indications 
necessary  and  signed  and  sealed  at  the  bottom  by  the  owner  or 
by  his  attorney,  who  shall,  likewise,  affix  thereto  the  power  of 
attorney;  and  all  other  documents,  if  there  are  any,  shall  be 
annexed  to  said  specimens  or  printed  designs. 

ART.  8.  The  First  Secretary  of  the  Council  with  which  the 
specimens  or  printed  designs  of  the  mark  have  been  deposited 
must,  after  having  pasted  one  of  the  specimens  of  the  mark  upon 
a  sheet  of  the  Register  kept  for  this  purpose,  enter  thereon: 
(1)  the  date  of  the  deposit;  (2)  the  name  of  the  owner  of  the 
mark  and  that  of  the  attorney,  should  there  be  one;  (3)  the  pro- 
fession and  the  domicile  of  the  owner  of  the  mark ;  (4)  the  indi- 
cation of  the  nature  of  the  products  or  of  the  articles  for  which 
the  mark  is  intended;  (5)  the  serial  number  of  these  documents. 
These  documents  shall  be  signed  and  sealed  by  the  Ministry  of 
Commerce  if  the  deposit  is  made  at  Constantinople,  or,  by  the 
Administrative  Council  of  the  Province,  if  it  is  done  in  the 
Provinces ;  they  shall  likewise  be  signed  or  sealed  by  the  owner 
of  the  mark  or  by  his  attorney. 

The  second  specimen  or  printed  design  intended  for  the 


TURKEY  939 

Ministry  of  Justice  shall  be  affixed  to  a  piece  of  paper  that  shall 
bear  all  the  indications  mentioned  above  and  which  likewise 
shall  be  signed  or  sealed  by  the  owner  or  by  his  attorney.  In 
case  the  deposit  of  the  mark  should  be  effected  in  a  Province, 
a  third  specimen  or  printed  design  shall  be  sent  to  the  Ministry 
of  Commerce. 

ART.  9.  The  formalities  provided  for  in  the  preceding  arti- 
cles once  fulfilled,  the  Ministry  of  Commerce,  at  Constantinople, 
or  the  Administrative  Council  of  the  Province  in  the  Provinces, 
shall  deliver  a  provisional  acte  (Ilmou-haber)  sealed  by  them 
pending  the  issue  of  the  final  acte  (Ilmou-haber)  delivered  by 
the  Ministry  of  Justice  after  having  collected  the  fee  provided 
for  in  Art.  5. 

ART.  10.  The  Governor-General  shall  send  by  the  first 
courier  to  the  Ministry  of  Justice  the  specimen  or  printed  de- 
sign of  the  mark  with  an  extract  of  the  registration  intended, 
as  is  mentioned  in  Art.  8,  for  this  Ministry,  with  which  the  said 
documents  shall  be  registered  and  preserved. 

The  Ministry  of  Justice  shall  draw  up,  in  consequence,  an 
acte  (Ilmou-haber),  printed  and  in  official  form,  and  shall  for- 
ward it  to  the  Province  within  a  term  of  one  month  at  most. 

SECTION  III 

JURISDICTION 

ART.  11.  Civil  action  relative  to  marks  shall  be  brought 
before  Courts  of  the  First  Instance  of  the  Empire  and  they  shall 
be  adjudged  there  as  summary  cases.  Criminal  actions  relative 
thereto  shall  likewise  be  adjudged  by  the  said  Courts. 

If,  in  case  of  action  brought  criminally,  the  accused  shall 
raise  questions  relative  to  the  mark,  the  criminal  section  of  the 
Court  entrusted  with  the  principal  action  shall  also  decide  re- 
garding the  exception. 

ART.  12.  The  owner  of  a  mark  may  have  the  Court  proceed 
with  the  detailed  description  of  the  nature  of  the  goods  and  the 
quantity  of  the  products  and  articles  that  he  claims  to  have  been 
marked  to  his  injury  and  in  contravention  of  the  dispositions  of 
the  present  Regulation ;  he  may,  likewise,  should  there  be  occa- 
sion, cause  them  to  be  seized  by  virtue  of  an  order  of  the  Court. 

The  order  shall  be  made  on  petition  of  the  plaintiff  and 
upon  presentation  by  him  of  the  acte  (Ilmou-haber)  evidencing 
the  deposit  of  his  mark.  The  Court  shall  name,  should  there  be 
occasion,  an  expert  to  aid  the  judicial  personnel  charged  with 
this  duty. 

When  the  seizure  of  the  goods  is  petitioned,  the  Court  may, 
before  ordering  the  seizure,  require  of  the  owner  of  the  mark 


940  TURKEY 

a  bond,  should  it  so  deem  necessary.  There  shall  be  communi- 
cated to  the  holder  of  the  products  described  and  seized  a  copy 
of  the  order  of  the  Court  and  of  the  acte  evidencing  the  deposit 
of  the  bond,  if  such  has  been  required.  In  case  of  defect  in  the 
above  indicated  formalities ;  that  is  to  say,  in  the  case  in  which 
the  said  copy  shall  not  be  communicated,  the  formalities  ful- 
filled shall  be  considered  as  null  and  void,  and  an  official  so 
neglecting  shall  be  amenable  to  damages. 

ART.  13.  In  default  by  the  plaintiff  of  bringing  action 
within  the  term  of  fifteen  days,  adding  to  this  delay  one  day  for 
each  six  hours  of  distance  between  the  locality  in  which  the  in- 
ventoried and  seized  objects  are  located  and  the  domicile  of  the 
defendant,  the  description  or  the  seizure  of  the  objects  shall  be 
null  and  void,  without,  however,  prejudicing  an  action  for  dam- 
ages which  may  be  brought. 

SECTION  IV 

PENALTIES  PRESCRIBED  FOR  THE  COUNTERFEITER  OF  DULY 
DEPOSITED  MARKS 

ART.  14.  They  shall  be  punished  by  a  fine  of  from  two  to 
fifty  Turkish  pounds  or  by  imprisonment  of  from  one  month  to 
six  months,  or  again  by  the  two  penalties  at  the  same  time,  ac- 
cording to  the  degree  of  gravity  of  the  crime:  (1)  that  have 
counterfeited  a  mark  whose  design  or  facsimile  is  found  de- 
posited in  conformity  with  the  present  law,  or  makes  use  of  a 
counterfeit  mark;  (2)  that  have  fraudulently  affixed  upon  their 
products  or  their  articles  of  commerce  a  mark  belonging  to 
another;  (3)  that  have  knowingly  sold  or  placed  on  sale  one  or 
several  kinds  of  products  or  articles  bearing  a  counterfeit  or 
fraudulently  affixed  mark. 

ART.  15.  They  shall  be  punished  by  a  fine  of  from  two  to 
thirty  Turkish  pounds,  or  by  imprisonment  of  from  one  week 
to  two  months,  or  again  by  these  two  penalties  at  the  same  time : 
(1)  that  have  fraudulently  altered  a  mark,  or  have  made  use 
of  a  fraudulently  altered  mark;  (2)  that  have  affixed  marks 
proper  for  one  kind  of  product  or  article  to  another  kind  of 
product  or  article  with  the  manifest  intention  of  deceiving  the 
buyer  as  to  the  nature  of  the  goods;  (3)  that  have  knowingly 
sold  or  have  offered  for  sale  goods  bearing  these  marks. 

ART.  16.  They  shall  be  punished  with  a  fine  of  from  one 
to  ten  Turkish  pounds  or  by  imprisonment  of  from  twenty-four 
hours  to  one  week,  or  again  by  these  two  penalties  at  the  same 
time:  that  have  not  affixed  upon  their  goods  or  articles,  deter- 
mined by  the  Ministry  of  Commerce,  the  mark  deposited,  as  is 
provided  in  Art.  2,  and  those  that  have  sold  or  placed  on  sale 
products  not  bearing  said  mark. 


TURKEY  941 

ART.  17.  In  case  an  individual  should  be  brought  to  ac- 
count on  the  ground  of  divers  crimes  determined  in  the  present 
Regulation,  he  shall  be  amenable  only  to  the  penalty  prevailing 
for  the  gravest  crime. 

ART.  18.  In  case  of  repetition,  the  penalties  shall  be 
doubled  at  most. 

There  shall  be  considered  as  a  repeater  any  individual  that, 
after  having  been  punished  for  one  of  the  crimes  above  men- 
tioned, shall  commit  one  of  these  crimes  within  five  years,  count- 
ing from  the  date  of  the  first  conviction. 

ART.  19.  The  confiscation  of  objects  and  articles,  the  mark 
whereof  shall  be  recognized  as  contrary  to  the  provisions  of 
Arts.  14  and  15,  as  well  as  of  the  instruments  and  tools  that 
have  specially  served  for  the  making  of  this  mark,  may  be  or- 
dered by  the  tribunal,  even  in  case  of  conviction  of  the  accused.* 

The  Court  may  order  that  articles  bearing  a  mark,  counter- 
feit or  belonging  to  another,  and  confiscated,  along  with  the 
counterfeit  mark,  be  delivered  to  the  owner  of  the  genuine  mark. 

The  value  of  these  articles  may,  if  necessary,  be  appraised 
for  the  payment  of  damages.  All  marks  recognized  as  contrary 
to  the  dispositions  of  Arts.  14  and  15  shall  be  destroyed  in  every 
case. 

ART.  20.  Those  that  have  knowingly  offered  for  sale 
products  not  bearing  the  mark  declared  obligatory  for  this  kind 
of  product  shall  be  amenable  to  the  penalty  provided  for  in  Art. 
15,  without  prejudice  to  the  obligation  of  affixing  upon  these 
articles  the  marks  declared  obligatory. 

In  case  of  repetition  within  a  term  of  five  years,  counting 
from  the  date  of  the  conviction  for  a  crime  of  this  nature,  the 
Court  may  order  the  confiscation  of  the  goods  and  articles. 

SECTION  V 

PENALTIES  RELATIVE  TO  FALSE  INDICATIONS  OF  ORIGIN 
ART.  21.  They  shall  be  punished,  according  to  the  degree 
of  gravity  of  the  crime,  by  a  fine  of  from  two  to  fifty  Turkish 
pounds  or  by  imprisonment  of  from  one  month  to  six  months, 
or  again  by  these  two  penalties  at  the  same  time:  that  have 
indicated,  such  as  it  is  or  with  other  characteristics,  on  goods, 
a  locality  of  the  Ottoman  Empire  other  than  that  of  the  real 

*"La  confiscation  .  .  .  pourra  etre  prononcee  par  le  Tribunal,  meme  en 
cos  de  condemnation  du  prevenu"  (from  official  copy  in  French,  issued  by  the 
Direction  Generale  de  I'lndustrie  of  the  Ministere  du  Commerce  et  de  1'Agri- 
culture,  Constantinople) . 

The  intent  of  this  proviso  is  doubtful,  other  laws  drawn  up  on  the  same 
model  using  the  expression  "even  in  case  of  acquittal."  See  Greece,  Italy,  Tunis, 
and  Morocco  (French  Zone),  etc. 


942  TURKEY 

origin  of  these  products,  as  well  as  those  that  have  knowingly 
sold  or  placed  on  sale  products  of  this  nature. 

ART.  22.  Actions  resulting  from  facts  foreseen  in  Art.  21 
shall  be  adjudged  in  conformity  with  the  provisions  of  the 
present  Regulation  relative  to  jurisdiction. 

ART.  23.  In  case  the  products  of  the  mark  counterfeited 
and  bearing  the  name  of  any  country  are  unladen  at  the  cus- 
tom house,  they  shall  not  be  prohibited  entry,  without  prejudice, 
however,  to  action  being  brought  by  manufacturers  of  products 
whose  marks  are  counterfeited,  if  they  are  counterfeited  abroad ; 
if  Ottoman  products  counterfeited  abroad  and  likewise  bearing 
a  counterfeit  mark  are  introduced  into  the  Empire,  they  shall 
be  prohibited  entry  and  returned  to  their  owner. 

Goods  whose  proprietor  is  not  known  shall  be  kept  at  the 
custom  house  one  year. 

On  the  expiration  of  the  year,  if  these  goods  shall  not  be 
susceptible  of  being  kept  one  year  more,  they  shall  be  placed 
on  sale,  by  way  of  adjudication,  before  they  have  deteriorated ; 
the  counterfeit  marks  thereto  affixed  shall  previously  be  de- 
stroyed. 

The  proceeds  of  the  sale  of  these  articles,  deduction  being 
made  for  storage,  shall  be  retained  at  the  custom  house  until 
the  end  of  the  second  year,  to  be  forwarded  to  the  owner  on 
his  petition;  in  default  of  claim  prior  to  said  date,  they  shall 
be  deposited  in  the  Treasury  of  the  Administration  for  the 
profit  of  this  latter. 

Goods  seized  at  the  customs,  goods  of  which  it  would  be 
impossible  to  destroy  the  mark  and  that  shall  not  be  claimed 
during  one  full  year  by  their  owner,  shall  be  destroyed. 

ART.  24.  The  Regulation  regarding  marks  dated  24 
Djemaz-ul-akhir  1288,  as  well  as  its  supplement  of  29  Rebul- 
akhir  1289,  are  annulled  counting  from  the  date  of  the  promul- 
gation of  the  present  Regulation. 

ARTICLE  ADDITIONAL  TO  THE  REGULATION  REGARDING  MARKS  OF 

MANUFACTURE  AND  COMMERCE,  BECOMING  EFFECTIVE  IN 

ACCORDANCE  WITH  IMPERIAL  IRAD£  PROMULGATED 

TO  THIS  EFFECT  ON  AUGUST  12,  1317* 

If  the  owners  make  petition  therefor,  there  shall  be  de- 
livered a  duplicate  of  marks  certificates  for  which  have  been 
obtained. 

There  shall  be  collected  a  fee  of  twenty-five  piastres  for 
each  duplicate. 

*  Mohammedan  calendar. 


UGANDA  PROTECTORATE 

ORDINANCE  NO.  12  OF  JULY  1,  1912 

Short  Title 

1.  This  Ordinance  may  be  cited  as  '  *  The  Patents,  Designs 
and  Trade  Marks  Ordinance,  1912,"*  and  shall  come  into  opera- 
tion on  such  date  as  the  Governor  shall  by  notice  prescribe. 

Appointment  of  Registrar 

2.  The  Governor  may  appoint  a  Registrar  of  Patents, 
Designs  and  Trade  Marks  (in  this  Ordinance  called  the  Regis- 
trar) with  an  office  to  be  called  the  Registry  of  Patents,  Designs 
and  Trade  Marks  (in  this  Ordinance  called  the  Registry)  and 
until  such  appointment  be  made  the  Principal  Registrar  of 
Documents  shall  be  and  perform  the  duties  of  such  Registrar, 
and  the  office  of  the  said  Principal  Registrar  of  Documents  shall 
be  such  Registry.     The  term  "Registrar"  shall  include  any 
Deputy  Registrar  or  person  acting  under  the  authority  of  such 
Registrar. 

Register 

3.  There  shall  be  kept  at  the  Registry  a  book  called    .    .    . 
"The  Register  of  Trade  Marks." 

To  whom  certificates  of  Registration  may  be  granted 

5.  A  certificate  of  registration  ...  of  any  trade  mark 
may  be  granted  in  the  Protectorate  to  any  person  who  in  the 
United  Kingdom  is  the  registered  proprietor  of  such  .   .   . 
trade  mark  or  to  any  person  to  whom  all  interest  in  such  .    .    . 
trade  mark  in  respect  of  the  Protectorate  has  been  assigned. 

Procedure 

6.  Every  application  .    .    .  for  the  registration  of  a  .   .   . 
trade  mark  under  this  Ordinance  shall  be  addressed  to  the  Reg- 
istrar and  there  shall  be  transmitted  with  such  application  so 
far  as  the  same  shall  be  applicable  — 

(3)  Two  copies  of  any  drawing  in  relation  to  the  .   .   . 
trade  mark. 

(5)  A  block  containing  a  representation  of  the  trade  mark 
of  a  size  suitable  for  insertion  in  the  Gazette. 

(6)  ^.n  affidavit  that  the  applicant  .   .   ,  is  the  registered 

*  Provisions  not  relating  to  trade  marks  are  omitted. 


944  UGANDA  PKOTECTORATE 

proprietor  in  the  United  Kingdom,  of  the  .  .  .  trade  mark  for 
which  protection  is  asked,  or  that  he  is  the  person  to  whom  all 
interest  in  such  .  .  .  trade  mark  in  respect  of  the  Protec- 
torate has  been  assigned. 

Applications  to  be  filed  and  recorded 

7.  The  Registrar  shall  file  every  such  application  and  the 
enclosures  thereto  in  the  Register,  and  shall  cause  to  be  made 
in  the  proper  Register  in  the  prescribed  manner  an  entry  of  the 
nature  of  the  .    .    .  trade  mark  and  of  the  filing  of  the  applica- 
tion and  of  the  enclosures  thereto. 

Issue  of  certificates  of  registration 

8.  A  certificate  in  duplicate  in  the  prescribed  form  of  the 
entry  in  the  Register  shall  thereupon  be  made  under  the  hand 
of  the  Governor  and  of  the  Registrar  and  under  the  seal  of  the 
Protectorate.    One  copy  of  such  certificate  shall  be  issued  to  the 
applicant  and  one  copy  shall  be  filed  by  the  Registrar.    Such 
certificate  shall  be  the  .    .    .  certificate  of  the  registration  of 
the  .    .    .  trade  mark,  .    .    .  and  shall  confer  upon  the  person 
obtaining  the  same  or  other  the  lawful  holder  thereof  within  the 
limits  of  the  Protectorate  every  right,  title  and  advantage  which 
the  holder  of  the  .    .    .  certificate  of  the  registration  of  a  .    .   . 
trade  mark  has  in  England  in  respect  of  such  .    .    .  trade  mark, 
provided  that  such  certificate  shall  be  null  and  void  whenever 
the  .    .    .  certificate  to  which  it  refers  shall  finally  cease  in 
England. 

Order  affecting  Registrar  may  be  made  by  the  High  Court 

9.  An  order  requiring  the  Registrar  to  do  or  abstain  from 
doing  anything  under  this  Ordinance  may  be  made  by  a  Judge 
of  the  High  Court  on  a  summons  in  Chambers. 

Certificate  of  Registrar  to  be  evidence 

10.  A  certificate  purporting  to  be  under  the  hand  of  the 
Registrar  as  to  any  entry,  matter,  or  thing  which  he  is  author- 
ised by  this  Ordinance,  or  any  rules  made  thereunder,  to  make 
or  do,  shall  be  prima  facie  evidence  of  the  entry  having  been 
made,  and  of  the  contents  thereof,  and  of  the  matter  or  thing 
having  been  done  or  left  undone. 

Sealed  copies  to  be  evidence 

11.  Printed  or  written  copies  or  extracts  purporting  to  be 
certified  by  the  Registrar  and  sealed  with  the  seal  of  the  Regis- 
try of  or  from  registers  and  other  books  or  documents  kept 
there  shall  be  admitted  in  evidence  in  all  Courts  in  the  Protec- 
torate, and  in  all  proceedings,  without  further  proof  or  a  pro- 
duction of  the  original. 


UGANDA  PROTECTORATE  945 

High  Court  to  afford  all  relief 

12.  (1)  The  High  Court  shall  have  power,  in  accordance 
with  the  provisions  of  the  Patents,  Designs,  and  Trade  Marks 
Acts  of  England,  to  grant,  either  absolutely  or  on  such  terms 
and  conditions  as  shall  seem  just,  all  such  remedies  as  any  per- 
son may  appear  to  be  entitled  to  in  respect  of  either  claim  to 
or  defence  of  any  right,  title  or  interest  in  relation  to  any 
.    .    .    registration  in  force  in  the  Protectorate  under  a  cer- 
tificate granted  under  this  Ordinance:    Provided  always  that 
no  such  act  passed  after  the  date  of  this  Ordinance  coming  into 
force  shall  apply  to  the  Protectorate  until  it  shall  be  applied  by 
Ordinance. 

(2)  Provided  that  nothing  in  this  section  contained  shall 
entitle  the  holder  of  any  certificate  of  entry  to  recover  damages 
for  infringements  of  any  .  .  .  trade  mark  happening  prior  to 
the  actual  date  of  the  grant  of  such  certificate  of  entry. 

"Passing  off"  action 

13.  Nothing  in  this  Ordinance  contained  shall  be  deemed 
to  affect  rights  of  action  against  any  person  for  passing  off 
goods  as  those  of  another  person  or  the  remedies  in  respect 
thereof. 

Offences 

14.  If  any  person  makes  or  causes  to  be  made  a  false  entry 
in  any  register  kept  under  this  Ordinance,  or  a  writing  falsely 
purporting  to  be  a  copy  of  an  entry  in  any  such  register,  or 
produces,  or  tenders,  or  causes  to  be  produced  or  tendered  in 
evidence  any  such  writing,  knowing  the  entry  or  writing  to  be 
false,  he  shall  be  liable  on  conviction  to  imprisonment  with  or 
without  hard  labour  for  a  term  not  exceeding  two  years,  or  to 
a  fine,  or  both. 

15.  If  any  person,  without  the  authority  of  His  Majesty, 
uses  in  connection  with  any  trade,  business,  calling,  or  profes- 
sion, the  Royal  Arms  (or  arms  so  closely  resembling  the  same 
as  to  be  calculated  to  deceive)  in  such  manner  as  to  be  calcu- 
lated to  lead  to  the  belief  that  he  is  duly  authorised  so  to  use 
the  Royal  Arms,  or  if  any  person  without  the  authority  of  His 
Majesty  or  of  a  member  of  the  Royal  Family  uses  in  connection 
with  any  trade,  business,  calling,  or  profession  any  device,  em- 
blem or  title  in  such  manner  as  to  be  calculated  to  lead  to  the 
belief  that  he  is  employed  by  or  supplies  goods  to  His  Majesty 
or  such  member  of  the  Royal  Family,  he  shall  be  liable  on  con- 
viction to  a  fine  not  exceeding  three  hundred  rupees :  Provided 
that  nothing  in  this  sub-section  shall  be  construed  as  affecting 
the  right,  if  any,  of  the  proprietor  of  a  trade  mark  containing 


946  UGANDA  PROTECTORATE 

>lem,  or  t 

Offences 


any  such  arms,  device,  emblem,  or  title  to  continue  to  use  such 
trade  mark. 


16. 


(3)  Any  person  who  represents  any  trade  mark  as  regis- 
tered, which  is  not  so,  shall  be  liable  for  every  offence  on  con- 
viction to  a  fine  not  exceeding  Rs.  75. 

A  person  shall  be  deemed,  for  the  purposes  of  this  section, 
to  represent  that  a  trade  mark  is  registered  if  he  uses  in  con- 
nection with  the  trade  mark  the  word  "registered"  or  any  word 
or  words  expressing  or  implying  that  registration  has  been  ob- 
tained for  the  trade  mark. 

(4)  Provided  always  that  if  the  person  alleged  to  have 
committed  an  offence  under  this  Section  shall  show  to  the  satis- 
faction of  the  Court  that  the  said  .  .  .  trade  mark  is  in  fact  .  .  . 
registered  under  the  provisions  of  the  law  in  force  in  England 
or  the  East  Africa  Protectorate,  such  representation  or  sale 
shall  not  constitute  an  offence  under  this  section. 

Offence 

17.  If  any  person  uses  on  his  place  of  business  or  any 
document  issued  by  him  or  otherwise  the  words  "Registry  of 
Patents,  Designs  or  Trade  Marks ' '  or  any  other  words  suggest- 
ing that  his  place  of  business  is  officially  connected  with,  or  is, 
the  Registry  of  Patents,  Designs  or  Trade  Marks,  he  shall  be 
liable  on  conviction  to  a  fine  not  exceeding  Rs.  300. 
Prohibition  of  use  of  emblem  of  red  cross  on  white  ground,  &c. 

18.  (1)  It  shall  not  be  lawful  for  any  person  to  use  for 
the  purposes  of  his  trade  or  business,  or  for  any  other  purpose 
whatsoever,  without  the  authority  in  writing  of  the  Army  Coun- 
cil of  Great  Britain,  the  heraldic  emblem  of  the  red  cross  on  a 
white  ground  formed  by  reversing  the  Federal  colours  of  Swit- 
zerland, or  the  words  "Red  Cross"  or  "Geneva  Cross,"  and  if 
any  person  acts  in  contravention  of  this  provision,  he  shall  be 
guilty  of  an  offence  against  this  Ordinance,  and  shall  be  liable 
on  conviction  to  a  fine  not  exceeding  Rs.  150,  and  to  forfeit  any 
goods  upon  or  in  connection  with  which  the  emblem  or  words 
were  used. 

(2)  Where  a  company  or  society  is  guilty  of  any  such  con- 
travention, without  prejudice  to  the  liability  of  the  company  or 
society,  every  director,  manager,  secretary  and  other  officer  of 
the  company  or  society  who  is  knowingly  a  party  to  the  contra- 
vention shall  be  guilty  of  an  offence  against  this  Ordinance  and 
liable  on  conviction  to  the  like  penalty. 


UGANDA  PEOTECTORATE  947 

(3)  Nothing  in  this  section  shall  affect  the  right  (if  any) 
of  the  proprietor  of  a  trade  mark  registered  under  the  English 
Acts  before  the  passing  of  this  Ordinance,  and  containing  any 
such  emblem  or  words,  to  continue  to  use  such  trade  mark  for 
a  period  of  four  years  from  the  18th  August,.  1911,  or  such  part 
of  the  said  four  years  as  the  said  trade  mark  shall  be  duly 
registered  under  the  English  Acts. 

(4)  Proceedings  under  this  Section  shall  not  be  instituted 
without  the  consent  of  the  Crown  Advocate. 

Report  of  Registrar 

19.  The  Registrar  shall  on  the  first  day  of  April  in  every 
year  issue  a  report  respecting  the  execution  by  him  of  this 
Ordinance. 

Power  to  make  rules 

20.  The  Governor  may  make  rules   (1)  prescribing  the 
forms  to  be  used  under  this  Ordinance,  (2)  providing  for  and 
regulating  the  search  and  inspection  of  the  Registers,  (3)  other- 
wise regulating  the  practice  of  registration  under  this  Ordi- 
nance, (4)  prescribing  the  fees  and  fixing  the  charges  to  be 
made  for  any  act,  matter  or  thing  under  this  Ordinance  to  be 
done  or  observed,  and  (5)  generally  for  the  better  carrying  into 
effect  of  the  provisions  of  this  Ordinance. 


UNITED  STATES  OF  AMERICA 

ACT  OF  FEBRUARY  20,  1905  (AS  AMENDED) 

AN  ACT  TO  AUTHORIZE  THE  REGISTRATION  OF  TRADE  MARKS  USED 

IN  COMMERCE  WITH  FOREIGN  NATIONS  OR  AMONG  THE 

SEVERAL  STATES  OR  WITH  INDIAN  TRIBES  AND 

TO  PROTECT  THE  SAME 

Be  it  enacted  by  the  Senate  and  House  of  Representatives 
of  the  United  States  of  America  in  Congress  assembled,  That 
the  owner  of  a  trade  mark  used  in  commerce  with  foreign 
nations,  or  among  the  several  States,  or  with  Indian  tribes,  pro- 
vided such  owner  shall  be  domiciled  within  the  territory  of  the 
United  States,  or  resides  in  or  is  located  in  any  foreign  country 
which,  by  treaty,  convention,  or  law,  affords  similar  privileges 
to  the  citizens  of  the  United  States,  may  obtain  registration  for 
such  trade  mark  by  complying  with  the  following  requirements : 
First,  by  filing  in  the  Patent  Office  an  application  therefor,  in 
writing,  addressed  to  the  Commissioner  of  Patents,  signed  by 
the  applicant,  specifying  his  name,  domicile,  location,  and  citi- 
zenship ;  the  class  of  merchandise  and  the  particular  description 
of  goods  comprised  in  such  class  to  which  the  trade  mark  is 
appropriated;  a  statement  of  the  mode  in  which  the  same  is 
applied  and  affixed  to  goods,  and  the  length  of  time  during  which 
the  trade  mark  has  been  used ;  a  description  of  the  trade  mark 
itself  shall  be  included,  if  desired  by  the  applicant  or  required 
by  the  commissioner,  provided  such  description  is  of  a  character 
to  meet  the  approval  of  the  commissioner.  With  this  statement 
shall  be  filed  a  drawing  of  the  trade  mark,  signed  by  the  appli- 
cant, or  his  attorney,  and  such  number  of  specimens  of  the  trade 
marks  as  actually  used  as  may  be  required  by  the  Commissioner 
of  Patents.  Second,  by  paying  into  the  Treasury  of  the  United 
States  the  sum  of  ten  dollars,  and  otherwise  complying  with  the 
requirements  of  this  act  and  such  regulations  as  may  be  pre- 
scribed by  the  Commissioner  of  Patents. 

SEC.  2.  That  the  application  prescribed  in  the  foregoing 
section,  in  order  to  create  any  right  whatever  in  favor  of  the 
party  filing  it,  must  be  accompanied  by  a  written  declaration 
verified  by  the  applicant,  or  by  a  member  of  the  firm  or  an  officer 
of  the  corporation  or  association  applying,  to  the  effect  that  the 
applicant  believes  himself  or  the  firm,  corporation,  or  associa- 
tion in  whose  behalf  he  makes  the  application  to  be  the  owner 
of  the  trade  mark  sought  to  be  registered,  and  that  no  other 


UNITED  STATES  OF  AMERICA  949 

person,  firm,  corporation,  or  association,  to  the  best  of  the  appli- 
cant's knowledge  and  belief,  has  the  right  to  use  such  trade  mark 
in  the  United  States,  either  in  the  identical  form  or  in  such  near 
resemblance  thereto  as  might  be  calculated  to  deceive ;  that  such 
trade  mark  is  used  in  commerce  among  the  several  States,  or 
with  foreign  nations,  or  with  Indian  tribes,  and  that  the  descrip- 
tion and  drawing  presented  truly  represent  the  trade  mark 
sought  to  be  registered.  If  the  applicant  resides  or  is  located 
in  a  foreign  country,  the  statement  required  shall,  in  addition 
to  the  foregoing,  set  forth  that  the  trade  mark  has  been  regis- 
tered by  the  applicant,  or  that  an  application  for  the  registration 
thereof  has  been  filed  by  him  in  the  foreign  country  in  which 
he  resides  or  is  located,  and  shall  give  the  date  of  such  regis- 
tration, or  the  application  therefor,  as  the  case  may  be,  except 
that  in  the  application  in  such  cases  it  shall  not  be  necessary  to 
state  that  the  mark  has  been  used  in  commerce  with  the  United 
States  or  among  the  States  thereof.  The  verification  required 
by  this  section  may  be  made  before  any  person  within  the  United 
States  authorized  by  law  to  administer  oaths,  or,  when  the  appli- 
cant resides  in  a  foreign  country,  before  any  minister,  charge 
d'affaires,  consul,  or  commercial  agent  holding  commission 
under  the  Government  of  the  United  States,  or  before  any  notary 
public,  judge,  or  magistrate  having  an  official  seal  and  author- 
ized to  administer  oaths  in  the  foreign  country  in  which  the 
applicant  may  be  whose  authority  shall  be  proved  by  a  certifi- 
cate of  a  diplomatic  or  consular  officer  of  the  United  States. 

SEC.  3.  That  every  applicant  for  registration  of  a  trade 
mark,  or  for  renewal  of  registration  of  a  trade  mark,  who  is  not 
domiciled  within  the  United  States,  shall,  before  the  issuance 
of  the  certificate  of  registration,  as  hereinafter  provided  for, 
designate,  by  a  notice  in  writing,  filed  in  the  Patent  Office,  some 
person  residing  within  the  United  States  on  whom  process  or 
notice  of  proceedings  affecting  the  right  of  ownership  of  the 
trade  mark  of  which  such  applicant  may  claim  to  be  the  owner, 
brought  under  the  provisions  of  this  act  or  under  other  laws  of 
the  United  States,  may  be  served,  with  the  same  force  and  effect 
as  if  served  upon  the  applicant  or  registrant  in  person.  For 
the  purposes  of  this  act  it  shall  be  deemed  sufficient  to  serve 
such  notice  upon  such  applicant,  registrant,  or  representative 
by  leaving  a  copy  of  such  process  or  notice  addressed  to  him  at 
the  last  address  of  which  the  Commissioner  of  Patents  has  been 
notified. 

SEC.  4.  That  an  application  for  registration  of  a  trade 
mark  filed  in  this  country  by  any  person  who  has  previously 
regularly  filed  in  any  foreign  country  which,  by  treaty,  conven- 


950  UNITED  STATES  OF  AMERICA 

tion,  or  law,  affords  similar  privileges  to  citizens  of  the  United 
States  an  application  for  registration  of  the  same  trade  mark 
shall  be  accorded  the  same  force  and  effect  as  would  be  accorded 
to  the  same  application  if  filed  in  this  country  on  the  date  on 
which  application  for  registration  of  the  same  trade  mark  was 
first  filed  in  such  foreign  country:  Provided,  that  such  applica- 
tion is  filed  in  this  country  within  four  months  from  the  date 
on  which  the  application  was  first  filed  in  such  foreign  country : 
And  provided,  that  certificate  of  registration  shall  not  be  issued 
for  any  mark  for  registration  of  which  application  has  been  filed 
by  an  applicant  located  in  a  foreign  country  until  such  mark 
has  been  actually  registered  by  the  applicant  in  the  country  in 
which  he  is  located. 

SEC.  5.  That  no  mark  by  which  the  goods  of  the  owner  of 
the  mark  may  be  distinguished  from  other  goods  of  the  same 
class  shall  be  refused  registration  as  a  trade  mark  on  account 
of  the  nature  of  such  mark  unless  such  mark — 

(a)  Consists  of  or  comprises  immoral  or  scandalous  matter. 

(b)  Consists  of  or  comprises  the  flag  or  coat  of  arms  or 
other  insignia  of  the  United  States  or  any  simulation  thereof, 
or  of  any  State  or  municipality  or  of  any  foreign  nation,  or  of 
any  design  or  picture  that  has  been  or  may  hereafter  be  adopted 
by  any  fraternal  society  as  its  emblem,  or  of  any  name,  distin- 
guishing  mark,   character,    emblem,   colors,    flag,    or   banner 
adopted  by  any  institution,  organization,  club,  or  society  which 
was  incorporated  in  any  State  in  the  United  States  prior  to  the 
date  of  the  adoption  and  use  by  the  applicant:  Provided,  that 
said  name,  distinguishing  mark,  character,  emblem,  colors,  flag, 
or  banner  was  adopted  and  publicly  used  by  said  institution, 
organization,  club,  or  society  prior  to  the  date  of  adoption  and 
use  by  the  applicant:  Provided,  that  trade  marks  which  are 
identical  with  a  registered  or  known  trade  mark  owned  and  in 
use  by  another  and  appropriated  to  merchandise  of  the  same 
descriptive  properties,  or  which  so  nearly  resemble  a  registered 
or  known  trade  mark  owned  and  in  use  by  another  and  appro- 
priated to  merchandise  of  the  same  descriptive  properties  as  to 
be  likely  to  cause  confusion  or  mistake  in  the  mind  of  the  public 
or  to  deceive  purchasers  shall  not  be  registered :  Provided,  that 
no  mark  which  consists  merely  in  the  name  of  an  individual, 
firm,  corporation,  or  association  not  written,  printed,  impressed, 
or  woven  in  some  particular  or  distinctive  manner,  or  in  associa- 
tion with  a  portrait  of  the  individual,  or  merely  in  words  or 
devices  which  are  descriptive  of  the  goods  with  which  they  are 
used,  or  of  the  character  or  quality  of  such  goods,  or  merely  a 
geographical  name  or  term,  shall  be  registered  under  the  terms 


UNITED  STATES  OF  AMERICA  951 

of  this  Act :  Provided  further,  that  no  portrait  of  a  living  indi- 
vidual may  be  registered  as  a  trade  mark  except  by  the  consent 
of  such  individual,  evidenced  by  an  instrument  in  writing :  And 
provided  further,  that  nothing  herein  shall  prevent  the  regis- 
tration of  any  mark  used  by  the  applicant  or  his  predecessors, 
or  by  those  from  whom  title  to  the  mark  is  derived,  in  commerce 
with  foreign  nations  or  among  the  several  States  or  with  Indian 
tribes  which  was  in  actual  and  exclusive  use  as  a  trade  mark 
of  the  applicant,  or  his  predecessors  from  whom  he  derived 
title,  for  ten  years  next  preceding  February  twentieth,  nineteen 
hundred  and  five:  Provided  further,  that  nothing  herein  shall 
prevent  the  registration  of  a  trade  mark  otherwise  registrable 
because  of  its  being  the  name  of  the  applicant  or  a  portion 
thereof. 

SEC.  6.  That  on  the  filing  of  an  application  for  registra- 
tion of  a  trade  mark  which  complies  with  the  requirements  of 
this  act,  and  the  payment  of  the  fees  herein  provided  for,  the 
Commissioner  of  Patents  shall  cause  an  examination  thereof 
to  be  made ;  and  if  on  such  examination  it  shall  appear  that  the 
applicant  is  entitled  to  have  his  trade  mark  registered  under  the 
provisions  of  this  act,  the  commissioner  shall  cause  the  mark  to 
be  published  at  least  once  in  the  Official  Gazette  of  the  Patent 
Office.  Any  person  who  believes  he  would  be  damaged  by  the 
registration  of  a  mark  may  oppose  the  same  by  filing  notice  of 
opposition,  stating  the  grounds  therefor,  in  the  Patent  Office 
within  thirty  days  after  the  publication  of  the  mark  sought  to  be 
registered,  which  said  notice  of  opposition  shall  be  verified  by 
the  person  filing  the  same  before  one  of  the  officers  mentioned 
in  section  two  of  this  act.  An  opposition  may  be  filed  by  a  duly 
authorized  attorney,  but  such  opposition  shall  be  null  and  void 
unless  verified  by  the  opposer  within  a  reasonable  time  after 
such  filing.  If  no  notice  of  opposition  is  filed  within  said  time, 
the  commissioner  shall  issue  a  certificate  of  registration  there- 
for, as  hereinafter  provided  for.  It  on  examination  an  applica- 
tion is  refused,  the  commissioner  shall  notify  the  applicant, 
giving  him  his  reasons  therefor. 

SEC.  7.  That  in  all  cases  where  notice  of  opposition  has 
been  filed  the  Commissioner  of  Patents  shall  notify  the  appli- 
cant thereof  and  the  grounds  therefor. 

Whenever  application  is  made  for  the  registration  of  a 
trade  mark  which  is  substantially  identical  with  a  trade  mark 
appropriated  to  goods  of  the  same  descriptive  properties,  for 
which  a  certificate  of  registration  has  been  previously  issued  to 
another,  or  for  registration  of  which  another  has  previously 
made  application,  or  which  so  nearly  resembles  such  trade  mark, 


952  UNITED  STATES  OF  AMERICA 

or  a  known  trade  mark  owned  and  used  by  another,  as,  in  the 
opinion  of  the  commissioner,  to  be  likely  to  be  mistaken  there- 
for by  the  public,  he  may  declare  that  an  interference  exists  as 
to  such  trade  mark,  and  in  every  case  of  interference  or  opposi- 
tion to  registration  he  shall  direct  the  examiner  in  charge  of 
interferences  to  determine  the  question  of  the  right  of  registra- 
tion to  such  trade  mark,  and  of  the  sufficiency  of  objections  to 
registration,  in  such  manner  and  upon  such  notice  to  those  inter- 
ested as  the  commissioner  may  by  rules  prescribe. 

The  commissioner  may  refuse  to  register  the  mark  against 
the  registration  of  which  objection  is  filed,  or  may  refuse  to  reg- 
ister both  of  two  interfering  marks,  or  may  register  the  mark, 
as  a  trade  mark,  for  the  person  first  to  adopt  and  use  the  mark, 
if  otherwise  entitled  to  register  the  same,  unless  an  appeal  is 
taken,  as  hereinafter  provided  for,  from  his  decision,  by  a  party 
interested  in  the  proceeding,  within  such  time  (not  less  than 
twenty  days)  as  the  commissioner  may  prescribe. 

SEC.  8.  That  every  applicant  for  the  registration  of  a 
trade  mark,  or  for  the  renewal  of  the  registration  of  a  trade 
mark,  which  application  is  refused,  or  a  party  to  an  interference 
against  whom  a  decision  has  been  rendered,  or  a  party  who  has 
filed  a  notice  of  opposition  as  to  a  trade  mark,  may  appeal  from 
the  decision  of  the  examiner  in  charge  of  trade  marks,  or  the 
examiner  in  charge  of  interferences,  as  the  case  may  be,  to  the 
commissioner  in  person,  having  once  paid  the  fee  for  such 
appeal. 

SEC.  9.  That  if  an  applicant  for  registration  of  a  trade 
mark,  or  a  party  to  an  interference  as  to  a  trade  mark,  or  a 
party  who  has  filed  opposition  to  the  registration  of  a  trade 
mark,  or  party  to  an  application  for  the  cancellation  of  the  regis- 
tration of  a  trade  mark,  is  dissatisfied  with  the  decision  of  the 
Commissioner  of  Patents,  he  may  appeal  to  the  court  of  appeals 
of  the  District  of  Columbia,  on  complying  with  the  conditions 
required  in  case  of  an  appeal  from  the  decision  of  the  commis- 
sioner by  an  applicant  for  patent,  or  a  party  to  an  interference 
as  to  an  invention,  and  the  same  rules  of  practice  and  procedure 
shall  govern  in  every  stage  of  such  proceedings,  as  far  as  the 
same  may  be  applicable. 

SEC.  10.  That  every  registered  trade  mark,  and  every 
mark  for  the  registration  of  which  application  has  been  made, 
together  with  the  application  for  registration  of  the  same,  shall 
be  assignable  in  connection  with  the  good  will  of  the  business  in 
which  the  mark  is  used.  Such  assignment  must  be  by  an  instru- 
ment in  writing  and  duly  acknowledged  according  to  the  laws 
of  the  country  or  State  in  which  the  same  is  executed ;  any  such 


UNITED  STATES  OF  AMERICA  953 

assignment  shall  be  void  as  against  any  subsequent  purchaser 
for  a  valuable  consideration,  without  notice,  unless  it  is  recorded 
in  the  Patent  Office  within  three  months  from  date  thereof.  The 
commissioner  shall  keep  a  record  of  such  assignments. 

SEC.  11.  That  certificates  of  registration  of  trade  marks 
shall  be  issued  in  the  name  of  the  United  States  of  America, 
under  the  seal  of  the  Patent  Office,  and  shall  be  signed  by  the 
Commissioner  of  Patents,  and  a  record  thereof,  together  with 
printed  copies  of  the  drawing  and  statement  of  the  applicant, 
shall  be  kept  in  books  for  that  purpose.  The  certificate  shall 
state  the  date  on  which  the  application  for  registration  was 
received  in  the  Patent  Office.  Certificates  of  registration  of 
trade  marks  may  be  issued  to  the  assignee  of  the  applicant,  but 
the  assignment  must  first  be  entered  of  record  in  the  Patent 
Office. 

Written  or  printed  copies  of  any  records,  books,  papers,  or 
drawings  relating  to  trade  marks  belonging  to  the  Patent  Office, 
and  of  certificates  of  registration,  authenticated  by  the  seal  of 
the  Patent  Office  and  certified  by  the  commissioner  thereof,  shall 
be  evidence  in  all  cases  wherein  the  originals  could  be  evidence ; 
and  any  person  making  application  therefor  and  paying  the  fee 
required  by  law  shall  have  certified  copies  thereof. 

SEC.  12.  That  a  certificate  of  registration  shall  remain  in 
force  for  twenty  years,  except  that  in  the  case  of  trade  marks 
previously  registered  in  a  foreign  country  such  certificates  shall 
cease  to  be  in  force  on  the  day  on  which  the  trade  mark  ceases 
to  be  protected  in  such  foreign  country,  and  shall  in  no  case 
remain  in  force  more  than  twenty  years,  unless  renewed.  Cer- 
tificates of  registration  may  be  from  time  to  time  renewed  for 
like  periods  on  payment  of  the  renewal  fees  required  by  this  act, 
upon  request  by  the  registrant,  his  legal  representatives,  or 
transferees  of  record  in  the  Patent  Office,  and  such  request  may 
be  made  at  any  time  not  more  than  six  months  prior  to  the 
expiration  of  the  period  for  which  the  certificates  of  registration 
were  issued  or  renewed.  Certificates  of  registration  in  force  at 
the  date  at  which  this  act  takes  effect  shall  remain  in  force  for 
the  period  for  which  they  were  issued,  but  shall  be  renewable 
on  the  same  conditions  and  for  the  same  periods  as  certificates 
issued  under  the  provisions  of  this  act,  and  when  so  renewed 
shall  have  the  same  force  and  effect  as  certificates  issued  under 
this  act. 

SEC.  13.  That  whenever  any  person  shall  deem  himself 
injured  by  the  registration  of  a  trade  mark  in  the  Patent  Office 
he  may  at  any  time  apply  to  the  Commissioner  of  Patents  to 


954  UNITED  STATES  OF  AMERICA 

cancel  the  registration  thereof.  The  commissioner  shall  refer 
such  application  to  the  examiner  in  charge  of  interferences,  who 
is  empowered  to  hear  and  determine  this  question  and  who  shall 
give  notice  thereof  to  the  registrant.  If  it  appear  after  a  hear- 
ing before  the  examiner  that  the  registrant  was  not  entitled  to 
the  use  of  the  mark  at  the  date  of  his  application  for  registra- 
tion thereof,  or  that  the  mark  is  not  used  by  the  registrant,  or 
has  been  abandoned,  and  the  examiner  shall  so  decide,  the  com- 
missioner shall  cancel  the  registration.  Appeal  may  be  taken 
to  the  commissioner  in  person  from  the  decision  of  examiner  of 
interferences. 

SEC.  14.  That  the  following  shall  be  the  rates  for  trade 
mark  fees : 

On  filing  each  original  application  for  registration  of  a 
trade  mark,  ten  dollars :  Provided,  that  an  application  for  regis- 
tration of  a  trade  mark  pending  at  the  date  of  the  passage  of 
this  act,  and  on  which  certificate  of  registration  shall  not  have 
issued  at  such  date,  may,  at  the  option  of  the  applicant,  be  pro- 
ceeded with  and  registered  under  the  provisions  of  this  act 
without  the  payment  of  further  fee. 

On  filing  each  application  for  renewal  of  the  registration 
of  a  trade  mark,  ten  dollars. 

On  filing  notice  of  opposition  to  the  registration  of  a  trade 
mark,  ten  dollars. 

On  an  appeal  from  the  examiner  in  charge  of  trade  marks 
to  the  Commissioner  of  Patents,  fifteen  dollars. 

On  an  appeal  from  the  decision  of  the  examiner  in  charge 
of  interferences,  awarding  ownership  of  a  trade  mark  or  cancel- 
ing the  registration  of  a  trade  mark,  to  the  Commissioner  of 
Patents,  fifteen  dollars. 

For  certified  and  uncertified  copies  of  certificates  of  regis- 
tration and  other  papers,  and  for  recording  transfers  and  other 
papers,  the  same  fees  as  required  by  law  for  such  copies  of 
patents  and  for  recording  assignments  and  other  papers  relat- 
ing to  patents. 

SEC.  15.  That  sections  forty-nine  hundred  and  thirty-five 
and  forty-nine  hundred  and  thirty-six  of  the  Revised  Statutes, 
relating  to  the  payment  of  patent  fees  and  to  the  repayment  of 
fees  paid  by  mistake,  are  hereby  made  applicable  to  trade 
mark  fees. 

SEC.  16.  That  the  registration  of  a  trade  mark  under  the 
provisions  of  this  act  shall  be  prima  facie  evidence  of  ownership. 
Any  person  who  shall,  without  the  consent  of  the  owner  thereof, 
reproduce,  counterfeit,  copy,  or  colorably  imitate  any  such  trade 


UNITED  STATES  OF  AMERICA  955 

mark  and  affix  the  same  to  merchandise  of  substantially  the 
same  descriptive  properties  as  those  set  forth  in  the  registra- 
tion, or  to  labels,  signs,  prints,  packages,  wrappers,  or  recep- 
tacles intended  to  be  used  upon  or  in  connection  with  the  sale 
of  merchandise  of  substantially  the  same  descriptive  properties 
as  those  set  forth  in  such  registration,  and  shall  use,  or  shall 
have  used,  such  reproduction,  counterfeit,  copy,  or  colorable 
imitation  in  commerce  among  the  several  States,  or  with  a 
foreign  nation,  or  with  the  Indian  tribes,  shall  be  liable  to  an 
action  for  damages  therefor  at  the  suit  of  the  owner  thereof; 
and  whenever  in  any  such  action  a  verdict  is  rendered  for  the 
plaintiff,  the  court  may  enter  judgment  therein  for  any  sum 
above  the  amount  found  by  the  verdict  as  the  actual  damages, 
according  to  the  circumstances  of  the  case,  not  exceeding  three 
times  the  amount  of  such  verdict,  together  with  the  costs. 

SEC.  17.  That  the  circuit  and  territorial  courts  of  the 
United  States  and  the  supreme  court  of  the  District  of  Columbia 
shall  have  original  jurisdiction,  and  the  circuit  courts  of  appeal 
of  the  United  States  and  the  court  of  appeals  of  the  District  of 
Columbia  shall  have  appellate  jurisdiction  of  all  suits  at  law  or 
in  equity  respecting  trade  marks  registered  in  accordance  with 
the  provisions  of  this  act,  arising  under  the  present  act,  without 
regard  to  the  amount  in  controversy. 

SEC.  18.  That  writs  of  certiorari  may  be  granted  by  the 
Supreme  Court  of  the  United  States  for  the  review  of  cases 
arising  undei*  this  act  in  the  same  manner  as  provided  for  patent 
cases  by  the  act  creating  the  circuit  court  of  appeals. 

SEC.  19.  That  the  several  courts  vested  with  jurisdiction 
of  cases  arising  under  the  present  act  shall  have  power  to  grant 
injunctions,  according  to  the  course  and  principles  of  equity,  to 
prevent  the  violation  of  any  right  of  the  owner  of  a  trade  mark 
registered  under  this  act,  on  such  terms  as  the  court  may  deem 
reasonable ;  and  upon  a  decree  being  rendered  in  any  such  case 
for  wrongful  use  of  a  trade  mark  the  complainant  shall  be  enti- 
tled to  recover,  in  addition  to  the  profits  to  be  accounted  for  by 
the  defendant,  the  damages  the  complainant  has  sustained  there- 
by, and  the  court  shall  assess  the  same  or  cause  the  same  to  be 
assessed  under  its  direction.  The  court  shall  have  the  same 
power  to  increase  such  damages,  in  its  discretion,  as  is  given  by 
section  sixteen  of  this  act  for  increasing  damages  found  by 
verdict  in  actions  of  law;  and  in  assessing  profits  the  plaintiff 
shall  be  required  to  prove  defendant's  sales  only;  defendant 
must  prove  all  elements  of  cost  which  are  claimed. 

SEC.  20.  That  in  any  case  involving  the  rights  to  a  trade 
mark  registered  in  accordance  with  the  provisions  of  this  act, 


956  UNITED  STATES  OF  AMERICA 

in  which  the  verdict  has  been  found  for  the  plaintiff,  or  an 
injunction  issued,  the  court  may  order  that  all  labels,  signs, 
prints,  packages,  wrappers,  or  receptacles  in  the  possession  of 
the  defendant,  bearing  the  trade  mark  of  the  plaintiff  or  com- 
plainant, or  any  reproduction,  counterfeit,  copy,  or  colorable 
imitation  thereof,  shall  be  delivered  up  and  destroyed.  Any 
injunction  that  may  be  granted  upon  hearing,  after  notice  to  the 
defendant,  to  prevent  the  violation  of  any  right  of  the  owner 
of  a  trade  mark  registered  in  accordance  with  the  provisions  of 
this  act,  by  any  circuit  court  of  the  United  States,  or  by  a  judge 
thereof,  may  be  served  on  the  parties  against  whom  such  injunc- 
tion may  be  granted  anywhere  in  the  United  States  where  they 
may  be  found,  and  shall  be  operative,  and  may  be  enforced  by 
proceedings  to  punish  for  contempt,  or  otherwise,  by  the  court 
by  which  such  injunction  was  granted,  or  by  any  other  circuit 
court,  or  judge  thereof,  in  the  United  States,  or  by  the  Supreme 
Court  of  the  District  of  Columbia,  or  a  judge  thereof.  The  said 
courts  or  judges  thereof  shall  have  jurisdiction  to  enforce  said 
injunction,  as  herein  provided,  as  fully  as  if  the  injunction  had 
been  granted  by  the  circuit  court  in  which  it  is  sought  to  be 
enforced.  The  clerk  of  the  court  or  judge  granting  the  injunc- 
tion shall,  when  required  to  do  so  by  the  court  before  which 
application  to  enforce  said  injunction  is  made,  transfer  without 
delay  to  said  court  a  certified  copy  of  all  the  papers  on  which 
the  said  injunction  was  granted  that  are  on  file  in  his  office. 

SEC.  21.  That  no  action  or  suit  shall  be  maintained  under 
the  provisions  of  this  act  in  any  case  when  the  trade  mark  is 
used  in  unlawful  business,  or  upon  any  article  injurious  in  itself, 
or  which  mark  has  been  used  with  the  design  of  deceiving  the 
public  in  the  purchase  of  merchandise,  or  has  been  abandoned, 
or  upon  any  certificate  of  registration  fraudulently  obtained. 

SEC.  22.  That  whenever  there  are  interfering  registered 
trade  marks,  any  person  interested  in  any  one  of  them  may  have 
relief  against  the  interfering  registrant,  and  all  persons  inter- 
ested under  him,  by  suit  in  equity  against  the  said  registrant; 
and  the  court,  on  notice  to  adverse  parties  and  other  due  pro- 
ceedings had  according  to  the  course  of  equity,  may  adjudge 
and  declare  either  of  the  registrations  void  in  whole  or  in  part 
according  to  the  interest  of  the  parties  in  the  trade  mark,  and 
may  order  the  certificate  of  registration  to  be  delivered  up  to 
the  Commissioner  of  Patents  for  cancellation. 

SEC.  23.  That  nothing  in  this  act  shall  prevent,  lessen, 
impeach,  or  avoid  any  remedy  at  law  or  in  equity  which  any 
party  aggrieved  by  any  wrongful  use  of  any  trade  mark  might 
have  had  if  the  provisions  of  this  act  had  not  been  passed. 


UNITED  STATES  OF  AMERICA  957 

SEC.  24.  That  all  applications  for  registration  pending  in 
the  office  of  the  Commissioner  of  Patents  at  the  time  of  the 
passage  of  this  act  may  be  amended  with  a  view  to  bringing 
them,  and  the  certificate  issued  upon  such  applications,  under 
its  provisions,  and  the  prosecution  of  such  applications  may  be 
proceeded  with  under  the  provisions  of  this  act. 

SEC.  25.  That  any  person  who  shall  procure  registration 
of  a  trade  mark,  or  entry  thereof,  in  the  office  of  the  Commis- 
sioner of  Patents  by  a  false  or  fraudulent  declaration  or  repre- 
sentation, oral  or  in  writing,  or  by  any  false  means,  shall  be 
liable  to  pay  any  damages  sustained  in  consequence  thereof  to 
the  injured  party,  to  be  recovered  by  an  action  on  the  case. 

SEC.  26.  That  the  Commissioner  of  Patents  is  authorized 
to  make  rules  and  regulations,  not  inconsistent  with  law,  for  the 
conduct  of  proceedings  in  reference  to  the  registration  of  trade 
marks  provided  for  by  this  act. 

SEC.  27.  That  no  article  of  imported  merchandise  which 
shall  copy  or  simulate  the  name  of  any  domestic  manufacture, 
or  manufacturer  or  trader,  or  of  any  manufacturer  or  trader 
located  in  any  foreign  country  which,  by  treaty,  convention,  or 
law  affords  similar  privileges  to  citizens  of  the  United  States, 
or  which  shall  copy  or  simulate  a  trade  mark  registered  in 
accordance  with  the  provisions  of  this  act  or  shall  bear  a  name 
or  mark  calculated  to  induce  the  public  to  believe  that  the  article 
is  manufactured  in  the  United  States,  or  that  it  is  manufactured 
in  any  foreign  country  or  locality  other  than  the  country  or 
locality  in  which  it  is  in  fact  manufactured,  shall  be  admitted 
to  entry  at  any  customhouse  of  the  United  States ;  and,  in  order 
to  aid  the  officers  of  the  customs  in  enforcing  this  prohibition, 
any  domestic  manufacturer  or  trader,  and  any  foreign  manu- 
facturer or  trader,  who  is  entitled  under  the  provisions  of  a 
treaty,  convention,  declaration,  or  agreement  between  the 
United  States  and  any  foreign  country  to  the  advantages 
afforded  by  law  to  citizens  of  the  United  States  in  respect  to 
trade  marks  and  commercial  names,  may  require  his  name  and 
residence,  and  the  name  of  the  locality  in  which  his  goods  are 
manufactured,  and  a  copy  of  the  certificate  of  registration  of 
his  trade  mark,  issued  in  accordance  with  the  provisions  of  this 
act,  to  be  recorded  in  books  which  shall  be  kept  for  this  purpose 
in  the  Department  of  the  Treasury,  under  such  regulations  as 
the  Secretary  of  the  Treasury  shall  prescribe,  and  may  furnish 
to  the  department  facsimiles  of  his  name,  the  name  of  the  local- 
ity in  which  his  goods  are  manufactured,  or  of  his  registered 
trade  mark ;  and  thereupon  the  Secretary  of  the  Treasury  shall 
cause  one  or  more  copies  of  the  same  to  be  transmitted  to  each 


958  UNITED  STATES  OF  AMERICA 

collector  or  other  proper  officer  of  customs. 

SEC.  28.  That  it  shall  be  the  duty  of  the  registrant  to  give 
notice  to  the  public  that  a  trade  mark  is  registered,  either  by 
affixing  thereon  the  words  "Registered  in  U.  S.  Patent  Office," 
or  abbreviated  thus,  "Reg.  U.  S.  Pat.  Off.,"  or  when,  from  the 
character  or  size  of  the  trade  mark,  or  from  its  manner  of 
attachment  to  the  article  to  which  it  is  appropriated,  this  can 
not  be  done,  then  by  affixing  a  label  containing  a  like  notice  to 
the  package  or  receptacle  wherein  the  article  or  articles  are 
inclosed ;  and  in  any  suit  for  infringement  by  a  party  failing  so 
to  give  notice  of  registration  no  damages  shall  be  recovered, 
except  on  proof  that  the  defendant  was  duly  notified  of  infringe- 
ment and  continued  the  same  after  such  notice. 

SEC.  29.  That  in  construing  this  act  the  following  rules 
must  be  observed,  except  where  the  contrary  intent  is  plainly 
apparent  from  the  context  thereof:  The  United  States  includes 
and  embraces  all  territory  which  is  under  the  jurisdiction  and 
control  of  the  United  States.  The  word  "States"  includes  and 
embraces  the  District  of  Columbia,  the  Territories  of  the  United 
States,  and  such  other  territory  as  shall  be  under  the  jurisdic- 
tion and  control  of  the  United  States.  The  terms  "person"  and 
"owner,"  and  any  other  word  or  term  used  to  designate  the 
applicant  or  other  entitled  to  a  benefit  or  privilege  or  rendered 
liable  under  the  provisions  of  this  act,  include  a  firm,  corpora- 
tion, or  association  as  well  as  a  natural  person.  The  term 
"applicant"  and  "registrant"  embrace  the  successors  and 
assigns  of  such  applicant  or  registrant.  The  term  "trade  mark" 
includes  any  mark  which  is  entitled  to  registration  under  the 
terms  of  this  act,  and  whether  registered  or  not,  and  a  trade 
mark  shall  be  deemed  to  be  "affixed"  to  an  article  when  it  is 
placed  in  any  manner  in  or  upon  either  the  article  itself  or  the 
receptacle  or  package  or  upon  the  envelope  or  other  thing  in, 
by,  or  with  which  the  goods  are  packed  or  inclosed  or  otherwise 
prepared  for  sale  or  distribution. 

SEC.  30.  That  this  act  shall  be  in  force  and  take  effect 
April  first,  nineteen  hundred  and  five.  All  acts  and  parts  of 
acts  inconsistent  with  this  act  are  hereby  repealed  except  so  far 
as  the  same  may  apply  to  certificates  of  registration  issued 
under  the  act  of  Congress  approved  March  third,  eighteen  hun- 
dred and  eighty-one,  entitled  "An  act  to  authorize  the  registra- 
tion of  trade  marks  and  protect  the  same,"  or  under  the  act 
approved  August  fifth,  eighteen  hundred  and  eighty-two,  enti- 
tled "An  act  relating  to  the  registration  of  trade  marks." 


959 


TO   THE   REGISTRATION    OF   TRADE   MARKS 

SEC.  2.  That  the  Commissioner  of  Patents  shall  establish 
classes  of  merchandise  for  the  purpose  of  trade  mark  registra- 
tion, and  shall  determine  the  particular  descriptions  of  goods 
comprised  in  each  class.  On  a  single  application  for  registra- 
tion of  a  trade  mark  the  trade  mark  may  be  registered  at  the 
option  of  the  applicant  for  any  or  all  goods  upon  which  the  mark 
has  actually  been  used  comprised  in  a  single  class  of  merchan- 
dise, provided  the  particular  descriptions  of  goods  be  stated. 

SEC.  3.  That  any  owner  of  a  trade  mark  who  shall  have  a 
manufacturing  establishment  within  the  territory  of  the  United 
States  shall  be  accorded,  so  far  as  the  registration  and  protec- 
tion of  trade  marks  used  on  the  products  of  such  establishment 
are  concerned,  the  same  rights  and  privileges  that  are  accorded 
to  owners  of  trade  marks  domiciled  within  the  territory  of  the 
United  States  by  the  act  entitled  "An  act  to  authorize  the  regis- 
tration of  trade  marks  used  in  commerce  with  foreign  nations 
or  among  the  several  States  or  with  Indian  tribes,  and  to  protect 
the  same,"  approved  February  twentieth,  nineteen  hundred 
and  five. 

SEC.  4.  That  this  act  shall  take  effect  July  first,  nineteen 
hundred  and  six. 


ACT  OF  MARCH  19,  1920 

AN  ACT  TO  GIVE  EFFECT  TO  CERTAIN  PROVISIONS  OF  THE  CONVENTION 

FOR  THE  PROTECTION  OF  TRADE  MARKS  AND  COMMERCIAL  NAMES, 
MADE  AND  SIGNED  IN  THE  CITY  OF  BUENOS  AlRES,  IN  THE 
ARGENTINE  REPUBLIC,  AUGUST  20,  1910,  AND  FOR  OTHER 
PURPOSES. 

Be  it  enacted  by  the  Senate  and  House  of  Representatives 
of  the  United  States  of  America  in  Congress  assembled,  that  the 
Commissioner  of  Patents  shall  keep  a  register  of  (a)  all  marks 
communicated  to  him  by  the  international  bureaus  provided  for 
by  the  convention  for  the  protection  of  trade  marks  and  com- 
mercial names,  made  and  signed  in  the  city  of  Buenos  Aires,  in 
the  Argentine  Republic,  August  20,  1910,  in  connection  with 
which  the  fee  of  $50  gold  for  the  international  registration 
established  by  article  2  of  that  convention  has  been  paid,  which 
register  shall  show  a  facsimile  of  the  mark;  the  name  and  resi- 


960  UNITED  STATES  OF  AMERICA 

dence  of  the  registrant ;  the  number,  date,  and  place  of  the  first 
registration  of  the  mark,  including  the  date  on  which  applica- 
tion for  such  registration  was  filed  and  the  term  of  such  regis- 
tration, a  list  of  goods  to  which  the  mark  is  applied  as  shown 
by  the  registration  in  the  country  of  origin,  and  such  other  data 
as  may  be  useful  concerning  the  mark. 

(b)  All  other  marks  not  register  able  under  the  Act  of  Feb- 
ruary 20, 1905,  as  amended,  except  those  specified  in  paragraphs 
(a)  and  (b)  of  section  5  of  that  Act,  but  which  have  been  in  bona 
fide  use  for  not  less  than  one  year  in  interstate  or  foreign  com- 
merce, or  commerce  with  the  Indian  tribes  by  the  proprietor 
thereof,  upon  or  in  connection  with  any  goods  of  such  proprietor 
upon  which  a  fee  of  $10  has  been  paid  to  the  Commissioner  of 
Patents  and  such  formalities  as  required  by  the  said  commis- 
sioner have  been  complied  with:  Provided,  that  trade  marks 
which  are  identical  with  a  known  trade  mark  owned  and  used  in 
interstate  and  foreign  commerce,  or  commerce  with  the  Indian 
tribes  by  another  and  appropriated  to  merchandise  of  the  same 
descriptive  properties  as  to  be  likely  to  cause  confusion  or  mis- 
take in  the  mind  of  the  public  or  to  deceive  purchasers,  shall  not 
be  placed  on  this  register. 

SEC.  2.  That  whenever  any  person  shall  deem  himself 
injured  by  the  inclusion  of  a  trade  mark  on  this  register,  he 
may  at  any  time  apply  to  the  Commissioner  of  Patents  to  cancel 
the  registration  thereof.  The  commissioner  shall  refer  such 
application  to  the  examiner  in  charge  of  interferences,  who  is 
empowered  to  hear  and  determine  this  question,  and  who  shall 
give  notice  thereof  to  the  registrant.  If  it  appears  after  a  hear- 
ing before  the  examiner  that  the  registrant  was  not  entitled  to 
the  exclusive  use  of  the  mark,  at  or  since  the  date  of  his  appli- 
cation for  registration  thereof,  or  that  the  mark  is  not  used  by 
the  registrants  or  has  been  abandoned,  and  the  examiner  shall 
so  decide,  the  commissioner  shall  cancel  the  registration. 
Appeal  may  be  taken  to  the  commissioner  in  person  from  the 
decision  of  the  examiner  in  charge  of  interferences. 

SEC.  3.  That  any  person  who  shall  wilfully  and  with  intent 
to  deceive,  affix,  or  annex,  or  use  in  connection  with  any  article 
or  articles  of  merchandise,  or  any  container  or  containers  of 
the  same,  a  false  designation  of  origin,  including  words  or  other 
symbols,  tending  to  falsely  identify  the  origin  of  the  merchan- 
dise, and  shall  then  cause  such  merchandise  to  enter  into  inter- 
state or  foreign  commerce,  and  any  person  who  shall  knowingly 
cause  or  procure  the  same  to  be  transported  in  interstate  or 
foreign  commerce  or  commerce  with  Indian  tribes,  or  shall 
knowingly  deliver  the  same  to  any  carrier  to  be  so  transported, 


UNITED  STATES  OF  AMERICA  961 

shall  be  liable  to  an  action  at  law  for  damages  and  to  an  action 
in  equity  for  an  injunction,  at  the  suit  of  any  person,  firm,  or 
corporation  doing  business  in  the  locality  falsely  indicated  as 
that  of  origin,  or  in  the  region  in  which  such  locality  is  situated, 
or  at  the  suit  of  any  association  of  such  persons,  firms,  or 
corporations. 

SEC.  4.  That  any  person  who  shall  without  the  consent  of 
the  owner  thereof  reproduce,  counterfeit,  copy,  or  colorably 
imitate  any  trade  mark  on  the  register  provided  by  this  Act, 
and  shall  affix  the  same  to  merchandise  of  substantially  the  same 
descriptive  properties  as  those  set  forth  in  the  registration,  or 
to  labels,  signs,  prints,  packages,  wrappers,  or  receptacles 
intended  to  be  used  upon  or  in  connection  with  the  sale  of  mer- 
chandise of  substantially  the  same  descriptive  properties  as 
those  set  forth  in  such  registration,  and  shall  use,  or  shall  have 
used,  such  reproduction,  counterfeit,  copy,  or  colorable  imita- 
tion in  commerce  among  the  several  States,  or  with  a  foreign 
nation,  or  with  the  Indian  tribes,  shall  be  liable  to  an  action  for 
damages  therefor  at  the  suit  of  the  owner  thereof;  and  when- 
ever in  any  such  action  a  verdict  is  rendered  for  the  plaintiff 
the  court  may  enter  judgment  therein  for  any  sum  above  the 
amount  found  by  the  verdict  as  the  actual  damages,  according 
to  the  circumstances  of  the  case,  not  exceeding  three  times  the 
amount  of  such  verdict,  together  with  the  costs. 

SEC.  5.  That  it  shall  be  the  duty  of  a  registrant  under  this 
Act  of  a  mark  falling  within  class  (a)  of  section  1,  to  comply 
with  the  law  of  the  country  in  which  his  original  registration 
took  place,  in  respect  to  giving  notice  to  the  public  that  the  trade 
mark  is  registered,  in  connection  with  the  use  of  such  trade  mark 
in  the  United  States  of  America,  and  in  any  suit  for  infringe- 
ment by  a  party  failing  to  do  this,  no  damages  shall  be  recovered 
except  on  proof  that  the  defendant  was  duly  notified  of  the 
infringement  and  continued  the  same  after  such  notice. 

SEC.  6.  That  the  provisions  of  sections  15,  17,  18,  19,  20, 
21,  22,  23,  25,  26,  27,  and  28  (as  to  class  (b)  marks  only)  of  the 
Act  approved  February  20,  1905,  entitled  "An  Act  to  authorize 
the  registration  of  trade  marks  used  in  commerce  with  the  for- 
eign nations  or  among  the  several  states,  or  with  Indian  tribes, 
and  to  protect  the  same,"  as  amended  to  date,  and  the  provisions 
of  section  2  of  the  Act  entitled  "An  Act  to  amend  the  laws  of 
the  United  States  relating  to  the  registration  of  trade  marks," 
approved  May  4,  1906,  are  hereby  made  applicable  to  marks 
placed  on  the  register  provided  for  by  section  1  of  this  Act. 

SEC.  7.  That  written  or  printed  copies  of  any  records, 
books,  papers,  or  drawings  belonging  to  the  Patent  Office  and 


962 

relating  to  trade  marks  placed  on  the  register  provided  for  by 
this  Act,  when  authenticated  by  the  seal  of  the  Patent  Office  and 
certified  by  the  commissioner  thereof,  shall  be  evidence  in  all 
cases  wherein  the  originals  could  be  evidenced,  and  any  person 
making  application  therefor  and  paying  the  fee  required  by  law 
shall  have  certified  copies  thereof. 

SEC.  8.  That  the  same  fees  shall  be  required  for  certified 
and  uncertified  copies  of  papers  and  for  records,  transfers,  and 
other  papers,  under  this  Act,  as  are  required  by  law  for  such 
copies  of  patents  and  for  recording  assignments  and  other 
papers  relating  to  patents. 

On  filing  an  appeal  under  this  Act  to  the  Commissioner  of 
Patents  from  the  decision  of  the  examiner  in  charge  of  inter- 
ferences, awarding  ownership  of  a  trade  mark,  canceling  or 
refusing  to  cancel  the  registration  of  a  trade  mark,  a  fee  of  $15 
shall  be  payable. 

SEC.  9.  That  section  5  of  the  Trade  Mark  Act  of  February 
20,  1905,  being  Thirty-third  Statutes  at  Large,  page  725,  as 
amended  by  Thirty-fourth  Statutes  at  Large,  page  1251,  Thirty- 
sixth  Statutes  at  Large,  page  918,  Thirty-seventh  Statutes  at 
Large,  page  649,  is  hereby  amended  by  adding  the  following 
words  thereto:  "And  if  any  person  or  corporation  shall  so  have 
registered  a  mark  upon  the  ground  of  said  use  for  ten  years 
preceding  February  20,  1905,  as  to  certain  articles  or  classes 
of  articles  to  which  said  mark  shall  have  been  applied  for  said 
period,  and  shall  have  thereafter  and  subsequently  extended  his 
business  so  as  to  include  other  articles  not  manufactured  by 
said  applicant  for  ten  years  next  preceding  February  20,  1905, 
nothing  herein  shall  prevent  the  registration  of  said  trade  mark 
in  the  additional  classes  to  which  said  new  additional  articles 
manufactured  by  said  person  or  corporation  shall  apply,  after 
said  trade  mark  has  been  used  on  said  article  in  interstate  or 
foreign  commerce  or  with  the  Indian  tribes  for  at  least  one  year 
provided  another  person  or  corporation  has  not  adopted  and 
used  previously  to  its  adoption  and  use  by  the  proposed  regis- 
trant, and  for  more  than  one  year  such  trade  mark  or  one  so 
similar  as  to  be  likely  to  deceive  in  such  additional  class  or 
classes." 


URUGUAY 

LAW  OF  JULY  13,  1909 
CHAPTER  I 

OWNERSHIP  OF  MARKS 

ARTICLE  1.  There  may  be  used  as  marks  the  denomination 
of  articles  or  the  names  of  persons  in  a  distinctive  form,  em- 
blems, monograms,  engravings  or  prints,  seals,  vignettes  and 
reliefs,  ornamental  borders,  fancy  words  or  names,  letters  or 
numerals  of  a  special  design,  forming  a  combination,  the  recep- 
tacles or  wrappings  of  articles  and  any  other  sign  by  which  it 
is  desired  to  distinguish  the  manufactures  of  a  factory,  the 
articles  of  a  line  of  business,  or  the  products  of  the  agricultural, 
mining,  lumbering  or  cattle  raising  industries. 

ART.  2.  The  mark  may  be  placed  on  the  receptacles  or 
wrappings  or  on  the  articles  themselves  that  it  is  desired  to 
distinguish. 

ART.  3.  For  the  purposes  of  this  law  the  following  may 
not  be  considered  as  marks: 

1)  Letters,  words,  names,  coats  of  arms  or  distinctive  desig- 
nations that  the  authorities  of  the  State  or  the  Municipalities 
use  or  should  use; 

2)  The  form  that  is  given  to  products,  unless  it  be  more 
useful  or  convenient  than  others  for  the  kind  of  business  or 
industry  to  which  it  is  applied; 

3)  The  color  of  the  products  and  that  of  their  receptacles. 
There  may  be  used,  however,  as  marks,  the  combinations 

of  colors  of  the  receptacles : 

4)  Technical,  commercial  or  common  terms  that  are  used 
to  express  qualities  or  attributes  of  the  products ; 

5)  Terms  or  phrases  which  have  passed  into  general  usage, 
and  signs  that  are  not  fanciful,  that  is  to  say,  that  do  not  pre- 
sent characteristics  of  novelty  and  specialty ; 

6)  Designations  usually  employed  to  indicate  the  nature  of 
the  products,  or  the  class,  genus  or  species  to  which  they  belong ; 

7)  Designs  or  expressions  contrary  to  morals; 

8)  Caricatures,  portraits,  designs  or  expressions  that  tend 
to  ridicule  ideas,  persons  or  objects  worthy  of  respect  and  con- 
sideration ; 

9)  Portraits  or  names  of  living  persons,  unless  their  con- 
sent has  been  obtained,  and  of  persons  that  have  died,  unless  the 
consent  is  obtained  of  their  relatives  within  the  fourth  degree 


964  URUGUAY 

of  consanguinity  and  the  second  by  marriage ; 

10)  Letters,  words,  names,  coats  of  arms  or  distinctives 
that  foreign  States  use  or  should  use,  unless  their  commercial 
use  is  authorized  by  a  certificate  issued  by  the  proper  office  of 
the  State  interested; 

11)  Words  similar  to  a  commercial  name  or  to  a  name 
known  in  relation  to  determined  products ; 

12)  Words,  signs  or  distinctives  that  imply  an  intention 
to  compete  unfairly. 

ART.  4.  The  exclusive  ownership  of  a  mark,  as  also  the 
right  to  oppose  the  use  of  any  other  that  directly  or  indirectly 
may  produce  confusion  between  products  shall  belong  to  the 
merchant  or  manufacturer  that  has  complied  with  the  require- 
ments of  this  law. 

ART.  5.  The  exclusive  ownership  of  a  mark  shall  be  ac- 
quired solely  in  relation  to  the  article  for  which  it  has  been 
applied  for. 

ART.  6.  The  use  of  a  mark  is  optional.  However,  it  may 
be  obligatory  when  the  necessities  of  the  public  welfare  de- 
mand it. 

ART.  7.  The  ownership  of  a  mark  shall  pass  to  the  heirs, 
and  it  may  be  transferred  by  contract  or  by  the  terms  of  a  last 
will. 

ART.  8.  Assignment  or  sale  of  the  establishment  includes 
that  of  the  mark,  in  the  absence  of  stipulation  to  the  contrary, 
and  the  assignee  shall  have  the  right  to  use  the  mark  that  dis- 
tinguishes it,  even  if  it  be  a  name,  in  the  same  manner  as  the 
assignor,  without  other  restrictions  than  those  expressly  im- 
posed in  the  deed  of  sale  or  assignment. 

ART.  9.  The  transfer  of  a  mark  shall  be  authenticated  in 
the  Office  in  which  the  mark  was  registered,  in  order  to  acquire 
the  right  to  use  it. 

ART.  10.  The  registration  of  marks  is  attributive  of  own- 
ership and  no  one  can  enforce  exclusive  rights  to  a  mark  with- 
out producing  the  respective  certificate  issued  by  the  Minister 
of  Industry. 

ART.  11.  Notwithstanding  the  provision  contained  in  the 
previous  article,  any  person  that  may  have  an  unregistered 
mark  in  use  in  the  country  or  whose  registration  has  lapsed 
may  oppose  a  registration  that  a  third  party  attempts  to  make 
of  the  same  mark. 

If  the  third  party  shall  have  effected  the  registration  and 
obtained  the  respective  proofs  of  same,  the  persons  indicated 
in  the  preceding  paragraph  may  apply  to  the  Executive  Power 
for  the  annulment  of  the  registration  or  registrations  effected 


URUGUAY  965 

to  the  prejudice  of  his  prior  rights  of  user. 

Upon  the  institution  of  the  action  for  annulment  there  shall 
be  produced  or  indicated  the  proofs  which  substantiate  his  prior 
rights  of  user  to  the  registration  unlawfully  effected  by  the 
third  party. 

The  term  in  which  to  apply  for  annulment  shall  be  two 
years  from  the  date  of  the  registration  whose  annulment  is  ap- 
plied for,  which  term  having  passed,  no  objection  shall  be  ad- 
mitted against  the  registration  effected  in  the  Register.  Appli- 
cation may  also  be  made  for  the  annulment  of  a  registration 
effected  contrary  to  the  provisions  of  Art.  3  of  this  law. 

From  the  decision  of  the  Executive  Power — which  shall  be 
provisionally  complied  with — appeal  may  be  made  within  the 
period  of  sixty  days,  by  instituting  the  proper  action  before  a 
competent  judge. 

The  administrative  proceedings  shall  act  as  a  stay  to  the 
provision  laid  down  in  paragraph  4  of  this  article. 

ART.  12.  The  protection  which  the  registration  of  a  mark 
affords  shall  last  ten  years,  it  being  possible  to  prolong  this 
period  for  equal  terms  each  time  that  it  expires  or  is  about  to 
expire.  To  obtain  these  prolongations  the  legal  procedure 
shall  be  followed  and  the  proper  fee  shall  be  paid  in  accordance 
with  Art.  26. 

The  merchant  or  manufacturer  who  allows  the  term  of  ten 
years  to  expire  without  applying  for  the  renewal  of  the  regis- 
tration in  the  Register  may  not  invoke  in  his  favor  the  benefits 
which  the  provisions  of  this  present  law  accord. 

In  the  two  years  following  the  expiry  of  the  term  of  ten 
years  laid  down  in  paragraph  1,  the  person  who  had  registered 
it  in  his  name  or  his  legal  representative  alone  may  apply  for 
the  renewal  of  the  registration  of  the  mark. 

All  without  prejudice  to  what  is  provided  for  in  the  pre- 
ceding article. 

ART.  13.     The  right  to  property  in  a  mark  shall  cease : 

1)  Upon  application  by  the  interested  party. 

2)  When  the  nullity  of  the  grant  of  a  mark  is  declared  by 
the  competent  authorities. 

ART.  14.  When  the  extinction  of  a  mark  is  effected  by  any 
of  the  causes  mentioned  in  the  preceding  article,  the  fact  shall 
be  published  in  the  form  indicated  in  Art.  18. 

CHAPTER  II 

FORMALITIES  FOR  ACQUIRING  THE  OWNERSHIP  OF  MARKS 
ART.  15.    Whoever  shall  desire  to  obtain  the  ownership  of 
a  mark  of  manufacture,  commerce,  or  agriculture,  shall  apply 


966  UKUGUAY 

for  it  to  the  Ministry  of  Industry,  Labor  and  Public  Instruc- 
tion, proving  that  he  is  engaged  in  the  commerce  or  industry. 

The  presentation  of  the  Certificate  of  Commercial  Matricu- 
lation shall  in  each  case  be  sufficient  to  prove  it. 

For  the  registration  of  foreign  marks  there  shall  be  re- 
quired the  presentation  of  the  certificate  of  registration  in  the 
country  of  origin  or  substantiating  documents  proving  all  that 
is  required  in  the  preceding  paragraph  for  the  registration  of 
national  marks. 

ART.  16.  The  application  for  a  mark  shall  also  be  accom- 
panied by: 

1)  Three  facsimiles  of  the  mark  of  which  it  is  desired  to 
make  use; 

2)  A  duplicate  description  of  the  mark,  if  it  consists  of 
figures  or  emblems,  it  being  necessary  to  indicate  the  class  of 
articles  for  which  they  are  intended,  and  whether  they  will  be 
applied  to  products  of  manufacture,  of  the  earth,  or  to  objects 
of  commerce ; 

3)  By  a  receipt  proving  that  there  has  been  deposited  in 
the  General  Treasury  the  amount  of  the  prescribed  fee ; 

4)  By  a  power  or  letter  of  attorney,  duly  legalized  if  they 
are  issued  abroad; 

5)  By  the  authorization  of  the  persons  indicated  in  para- 
graph 9  of  Art.  3. 

ART.  17.  The  applications  that  are  presented  shall  be 
proved  by  means  of  a  brief  statement  which  gives  a  resume  of 
its  contents  and  the  date  and  hour  of  presentation,  in  a  book, 
the  leaves  of  which  shall  be  numbered  and  signed  by  the 
Minister. 

ART.  18.  The  statement  to  which  the  preceding  article  re- 
fers having  been  drawn  up,  there  shall  be  officially  published  at 
the  expense  of  the  interested  parties  an  extract  from  the  appli- 
cation, the  date  of  its  presentation,  the  name  of  the  party  in- 
terested, and  a  cut  of  the  mark,  for  which  there  shall  be  required 
from  the  applicant  the  corresponding  cliche  (electrotype). 

The  publication  shall  be  made  for  fifteen  consecutive  days 
in  the  Diario  Oficial. 

ABT.  19.  If,  ten  days  having  elapsed  after  the  last  pub- 
lication prescribed  by  the  preceding  article,  no  one  has  pre- 
sented himself  to  oppose  the  grant,  and  if  like  or  similar  marks 
have  not  previously  been  granted  under  the  conditions  named 
in  Arts.  5  and  6  of  this  law,  the  mark  applied  for  shall  be  regis- 
tered and  the  certificate  of  its  ownership  shall  be  issued. 

ART.  20.  The  certificate  of  the  mark  that  the  Ministry  of 
Industry,  Labor  and  Public  Instruction  shall  issue  shall  con- 


URUGUAY  967 

sist  in  a  certified  copy  of  the  decree  that  granted  it,  accompanied 
by  a  duplicate  of  the  description  and  drawings;  it  shall  be 
issued  in  the  name  of  the  Republic,  under  the  authority  of  the 
Government,  and  shall  bear  the  signature  of  the  Chief  of  the 
respective  Section  of  said  Ministry. 

ART.  21.  In  cases  in  which  the  registration  of  a  mark  is 
not  effected,  the  fee  paid  shall  be  returned  to  the  interested 
party. 

AST.  22.  Judicial  decisions  having  the  authority  of  res 
adjudicate  shall  be  officially  notified  to  the  Ministry  within  the 
period  of  ten  days,  by  the  delivery  of  a  certified  copy  of  the  said 
decisions. 

ART.  23.  The  Ministry  of  Industry  shall  keep  a  book  in 
which  shall  be  copied  all  decisions  which  are  rendered  in  regard 
to  marks,  granting  or  refusing  the  registration,  or  deciding 
incidental  questions. 

AET.  24.  Marks  for  which  certificates  are  issued,  as  also 
the  applications  and  descriptions  presented,  shall  be  filed  in  the 
Ministry  of  Industry.  In  case  of  litigation  there  shall  be  exhib- 
ited before  the  competent  judge  the  design  of  the  mark  with  a 
certified  copy  of  the  description  of  it,  or  of  any  other  exhibit 
concerning  the  question. 

ART.  25.  The  marks,  as  also  their  descriptions,  shall 
remain  in  the  Ministry  at  the  disposition  of  all  that  desire  to 
examine  them. 

ART.  26.  For  the  registration  and  certificate  of  a  mark, 
whatever  may  be  its  origin,  there  shall  be  paid  a  fee  of  ten  pesos. 
The  same  fee  shall  be  paid  for  the  registration  and  certificate 
of  transfer. 

For  certified  copies  of  certificates  that  are  applied  for  here- 
after there  shall  be  paid  ten  pesos  in  addition  to  the  value  of  the 
stamped  paper  on  which  they  are  issued. 

For  the  registration  and  certificate  of  a  renewed  mark  there 
shall  be  paid  twenty-five  pesos. 

ART.  27.  In  order  that  foreign  marks  may  enjoy  the  guar- 
antees which  this  law  accords,  they  must  be  registered  in  accord- 
ance with  its  provisions. 

The  owners  thereof  or  their  duly  authorized  agents  are  the 
only  ones  that  may  apply  for  the  registration. 

CHAPTER  III 

MANUFACTURING,  COMMERCIAL  AND  AGRICULTURAL  NAMES 
ART.  28.    The  name  of  a  merchant  or  manufacturer,  or  of 
a  firm,  or  the  title  or  designation  of  a  house  or  establishment 
which  deals  in  determined  articles,  shall  constitute  industrial 


968  URUGUAY 

property  for  the  purposes  of  this  law. 

ART.  29.  If  a  merchant  or  manufacturer  desires  to  engage 
in  an  industry  already  carried  on  by  another  person  of  the  same 
name  or  with  the  same  conventional  designation,  he  shall  adopt 
a  clear  modification  which  shall  make  this  name  or  designation 
visibly  different  from  that  which  the  preexisting  house  uses. 

ART.  30.  If  the  party  injured  by  the  use  of  a  name  of  man- 
ufacture or  commerce,  or  of  the  mining,  agricultural  or  lumber- 
ing industries,  does  not  make  any  complaint  within  the  term  of 
two  years  from  the  day  on  which  it  began  to  be  used  by  another, 
he  shall  lose  his  right  to  any  action. 

ART.  31.  Joint  stock  companies  shall  have  the  same  right 
to  the  name  which  they  bear  as  any  individual,  and  shall  be 
subject  to  the  same  limitations. 

ART.  32.  The  right  to  the  exclusive  use  of  a  name  as  indus- 
trial property  shall  terminate  with  the  house  of  commerce  that 
bears  it  or  with  the  cessation  of  the  industry  to  which  it  belongs. 

ART.  33.  The  registration  of  a  name  is  not  necessary  in 
order  to  exercise  the  rights  accorded  by  this  law,  save  in  the 
case  in  which  it  forms  part  of  the  mark. 

CHAPTER  IV 

PENAL  PROVISIONS 

ART.  34.  He  who  for  the  purpose  of  gain  makes,  counter- 
feits, alters  or  executes  a  mark  registered  by  another  person  in 
the  proper  Register,  shall,  upon  complaint,  be  punished  by 
imprisonment  of  from  twelve  to  fifteen  months. 

ART.  35.  He  who  with  the  same  motive  imitates  a  mark, 
design  or  model  under  such  conditions  that  the  consumer  may 
confuse  them  with  products  the  marks  of  which  have  been  duly 
registered,  shall,  upon  complaint,  be  punished  by  imprisonment 
of  from  nine  to  twelve  months. 

ART.  36.  Those  who  refill  with  spurious  products  recepta- 
cles bearing  the  mark  of  another,  or  those  who  refill  them  with 
products  that  do  not  correspond  to  the  genuine  product  men- 
tioned in  the  mark  which  the  receptacle  bears,  or  those  who  mix 
genuine  products  with  others  extracted  or  spurious,  shall  be 
punished,  upon  complaint,  with  imprisonment  of  from  nine  to 
twelve  months. 

ART.  37.  He  who  knowingly  sells  or  places  on  sale,  or 
offers  to  sell  or  distribute  merchandise  marked  with  the  marks 
to  which  the  preceding  articles  refer,  shall  be  punished,  upon 
complaint,  with  imprisonment  of  from  six  to  nine  months. 

ART.  38.  Those,  who  against  the  wish  of  the  legitimate 
owner,  use  or  place  genuine  marks  on  sale,  shall  be  punished, 


URUGUAY  969 

upon  complaint,  by  a  fine  of  from  one  hundred  to  two  hundred 
pesos. 

AET.  39.  Those  who  sell  or  place  on  sale  merchandise  with 
a  usurped  or  counterfeit  mark  shall  be  obliged  to  give  to  the 
merchant  or  manufacturer  who  is  the  owner  thereof  complete 
information  in  writing  in  regard  to  the  name  and  address  of 
those  from  whom  the  merchandise  has  been  purchased  or  pro- 
cured, as  also  in  regard  to  the  time  when  the  sale  commenced, 
and  in  case  of  refusal  they  may  be  legally  compelled  under  pen- 
alty of  being  considered  accomplices  of  the  guilty  party. 

ART.  40.  Merchandise  bearing  a  counterfeit  mark  that  is 
found  in  the  possession  of  the  counterfeiter  or  his  agents,  shall 
be  confiscated  and  sold,  and  the  proceeds,  after  the  expenses  and 
indemnities  established  by  this  law  have  been  paid,  shall  be 
appropriated  to  the  benefit  of  the  public  schools  of  the  Depart- 
ment in  which  the  confiscation  took  place. 

ART.  41.  Counterfeit  marks  that  are  found  in  possession 
of  the  counterfeiter  or  his  agents  shall  be  destroyed,  as  also  the 
instruments  which  served  especially  for  the  counterfeiting. 

ART.  42.  Those  injured  through  the  violation  of  the  pro- 
visions of  this  law,  may  bring  action  for  damages  and  injuries 
against  the  authors  of  the  fraud  and  their  accomplices. 

The  sentences  of  condemnation  shall  be  published  at  the 
expense  of  the  infringer. 

ART.  43.  No  action,  civil  or  criminal,  may  be  brought  after 
three  years  have  elapsed  since  the  commission  or  repetition  of 
the  offence,  or  after  one  year  from  the  day  on  which  the  owner 
of  the  mark  had  cognizance  of  the  fact  for  the  first  time.  The 
acts  that  interrupt  the  limitation  are  those  that  are  determined 
by  Common  Law. 

ART.  44.  The  provisions  contained  in  the  articles  of  this 
chapter  shall  be  applicable  to  those  who  unlawfully  make  use 
of  the  name  of  a  merchant,  manufacturer  or  of  a  firm,  of  the 
sign  or  designation  of  a  commercial  or  manufacturing  house, 
as  established  in  Arts.  28,  29,  30,  31,  32,  and  33  of  this  law. 

ART.  45.  The  provisions  contained  in  the  Penal  Code  shall 
be  applicable  to  the  offences  to  which  this  law  refers,  provided 
that  they  do  not  conflict  with  what  is  expressly  established  by 
this  law. 

CHAPTER  V 

PROCEDURE 

ART.  46.  Every  owner  of  a  mark  of  manufacture,  com- 
merce or  agriculture,  to  whose  knowledge  it  may  come  that 
there  are  to  be  found  in  the  Custom  House,  Post  Office  or  other 


970  URUGUAY 

Government  or  private  office,  labels,  capsules,  receptacles  or  any 
other  article  similar  to  those  which  constitute  or  belong  to  his 
mark,  may  apply  to  the  competent  authority,  asking  for  an 
attachment  on  the  said  articles,  and  the  judge  shall  grant  the 
request  on  the  responsibility  of  the  petitioner  and  such  security 
as  he  shall  deem  necessary  in  case  the  attachment  should  have 
been  granted  without  right. 

It  is  optional  with  the  judge  to  dispense  with  the  security 
when  the  applicant  is  a  person  of  well-known  responsibility. 

ART.  47.  Without  prejudice  to  what  is  laid  down  in  Art. 
39  of  this  law  and  other  measures  that  may  be  taken  in  the  crim- 
inal court,  the  owners  of  the  usurped,  counterfeit  or  imitation 
marks  may,  upon  their  own  responsibility,  apply  to  the  compe- 
tent judges,  asking  that  an  inventory  and  description  be  taken 
of  the  merchandise  or  products  which  are  found  bearing  said 
marks  in  a  house  of  commerce  or  any  other  place.  The  said 
inventory  shall  be  made  by  the  constable  of  the  court  or  by  any 
public  notary  whom  the  court  shall  name,  by  drawing  up  docu- 
ments which  shall  contain  a  detailed  description  of  the  merchan- 
dise or  products,  and  which  shall  be  signed  by  the  petitioner  if 
he  be  present,  the  constable  or  notary,  in  their  turn,  and  by  the 
proprietor  of  the  business  or  store,  or  in  his  absence,  by  two 
witnesses. 

ART.  48.  When  several  inventories  have  to  be  made  simul- 
taneously in  different  places,  the  judge  may  appoint  for  this 
purpose  any  public  notary  and  in  all  cases  direct,  if  he  shall 
believe  it  necessary,  that  there  shall  accompany  the  constable 
or  his  substitute  an  expert,  in  order  that  he  may  supervise  the 
description  of  the  inventoried  merchandise. 

ART.  49.  If,  during  the  taking  of  inventory,  the  explana- 
tions provided  for  by  Art.  39  of  this  law  are  given,  they  shall  be 
included  in  the  document. 

ART.  50.  In  order  that  the  order  for  the  inventory  and 
attachment  of  which  the  preceding  articles  treat  may  be  given, 
the  presentation  of  the  certificate  of  the  mark  is  required. 

ART.  51.  Fifteen  days  having  elapsed  from  the  effecting 
of  the  attachment,  the  same  shall  be  without  effect  if  the  owner 
of  the  mark  has  not  instituted  the  proper  action. 

ART.  52.  The  proceedings  to  which  the  offences  named  in 
Art.  34  and  following  of  this  law  give  rise,  shall  be  conducted 
according  to  the  procedure  laid  down  by  the  Code  of  Criminal 
Procedure. 

ART.  53.  Criminal  action  may  not  be  officially  instituted, 
and  shall  pertain  solely  to  the  interested  parties;  but,  once 
initiated,  it  shall  be  continued  by  the  Government  Criminal 


URUGUAY  971 

Attorney  if  he  think  it  proper. 

ART.  54.  The  parties  injured  by  violation  of  the  provisions 
of  this  law  may  bring  action  for  damages  and  injuries  against 
the  authors  and  accomplices  of  the  fraud. 

The  sentences  of  condemnation  shall  be  published  at  the 
expense  of  the  inf  ringer. 

CHAPTER  VI 

FINAL  PROVISIONS 

ART.  55.  The  owners  of  a  foreign  mark  that  has  not  been 
registered  in  the  Republic  may  make  use  of  the  actions  provided 
for  in  Art.  11  of  this  law  and  for  the  purposes  there  indicated. 

ART.  56.  The  present  Office  of  Marks  and  Patents  is  incor- 
porated with  the  Ministry  of  Industry,  Labor  and  Public 
Instruction,  and  the  Executive  Power  shall  direct  its  operation. 

ART.  57.  Provisions  that  conflict  with  this  present  law  and 
the  Decree  of  March  1,  1877,  are  repealed. 

ART.  58.  The  Executive  Power  shall  issue  regulations  for 
the  enforcement  of  this  law. 

ART.  59.    Communicate  this,  etc. 


VENEZUELA 

LAW  OF  MAY  24,  1877 

ARTICLE  1.  Any  person  or  society  domiciled  in  the  Kepublio 
and  any  corporation  created  by  National  authority,  by  the 
States  and  by  the  Territories,  as  well  as  any  person,  society, 
or  corporation  resident  in  a  foreign  country,  in  which  through 
treaty  or  agreement  there  is  accorded  to  Venezuelan  citizens  the 
same  or  analogous  rights  as  regards  those  that  are  granted  by 
this  law,  may  obtain  the  protection  or  guarantee  of  any  legit- 
imate mark  of  manufacture  or  of  commerce  for  the  use  of  which 
an  exclusive  concession  is  held,  or  which  it  may  be  desired  to 
adopt  and  use  for  such  purpose,  provided  that  there  be  fulfilled 
the  requisites  that  the  present  law  contains. 

ART.  2.  He  that  aspires  to  official  protection  for  a  mark 
of  manufacture  or  of  commerce  shall  present  at  the  Ministry 
of  Fomento  (Public  Industry)  an  application  on  stamped  paper 
of  the  seventh  class  wherein  shall  be  stated:  the  name  of  the 
applicant,  his  residence  and  mercantile  domicile,  the  class  of 
articles  or  goods  that  bear  or  are  to  bear  the  mark  of  manu- 
facture or  of  commerce,  the  particular  description  of  the  goods 
or  effects  comprised  in  such  class  to  which  there  is  affixed  or  it 
is  intended  to  affix  the  mark,  a  description  of  this  same  with 
facsimiles  in  which  may  be  seen  its  application  or  the  manner 
in  which  it  is  intended  to  apply  it  and  to  use  it ;  and,  finally,  the 
time  during  which  the  mark  shall  have  been  in  use,  in  case  its 
use  or  application  is  not  solicited  for  the  first  time. 

ART.  3.  Said  application  must  be  signed  by  the  applicant 
or  by  the  person  that  shall  present  it,  if  he  includes  formal 
power  of  attorney  that  authorizes  him  on  the  part  of  the  owner 
or  owners  of  the  mark,  it  being  evidenced  at  the  time  in  writing 
that  the  party  that  solicits  protection  for  the  mark  of  manu- 
facture or  of  commerce  has  the  right  to  its  use,  and  that  said 
mark  has  semblance  with  no  other  analogous  mark  already  reg- 
istered, so  that  it  might  be  confused  therewith  and  deceive  the 
public.  Likewise,  the  applicant  must  give  assurance  that  the 
description  and  facsimiles  before  mentioned,  and  which  must 
be  registered  in  the  corresponding  book,  are  exact  copies  of  the 
mark  of  manufacture  that  it  is  a  question  of  protecting. 

ART.  4.  The  Ministry  of  Fomento  shall  not  accept  nor 
register  any  mark  of  manufacture  or  of  commerce  that  is  not, 
or  cannot  be,  a  legitimate  mark,  or  that  is  merely  the  name  of  a 
person,  society,  or  corporation,  not  accompanied  by  a  mark 


VENEZUELA  973 

sufficient  for  distinguishing  it  from  the  same  name  when  other 
persons  use  it,  or  when  the  mark  is  identical  to  another  already 
appropriated  to  the  same  class  of  objects  and  belonging  to  a 
different  owner,  or  when  it  is  registered  or  presented  to  be 
registered,  or  when  it  so  resembles  the  mark  of  manufacture 
last  mentioned,  that  in  all  probability  it  might  deceive  the  public. 

AKT.  5.  There  shall  be  entered  and  registered  at  the  Min- 
istry of  Fomento  the  date  on  which  any  mark  of  manufacture  or 
of  commerce  is  presented,  to  the  end  of  obtaining  the  protection 
that  is  conceded  by  the  present  law,  and  the  copies  of  the  mark 
with  the  date  of  its  presentation  and  of  the  application  ad- 
dressed to  the  Ministry  of  Fomento,  sealed  with  the  seal  of  this 
latter  and  certified  by  the  Minister,  will  serve  as  sufficient  proof 
at  law  when  the  right  of  priority  as  to  the  use  of  the  mark  is 
controverted. 

ART.  6.  The  requisites  established  having  been  fulfilled, 
the  National  Executive,  through  the  organ  of  the  Ministry  of 
Fomento,  shall  forward  to  the  applicant,  if  there  shall  have 
been  no  opposition  by  third  party,  a  certificate  on  National 
stamped  paper  of  the  third  class,  which  the  applicant  shall  sign, 
in  which  declaration  shall  be  made  that  he  is  the  proprietor  of 
the  mark  of  manufacture  or  of  commerce  registered,  with  all  its 
specifications ;  such  certificate  having  to  be  signed  by  the  Minis- 
ter of  Fomento  and  sealed  with  the  seal  of  the  Ministry,  which 
same  shall  serve  as  title  of  registration. 

ART.  7.  The  right  of  exclusively  using  any  mark  of  manu- 
facture or  of  commerce  registered  and  certified  in  the  manner 
prescribed  shall  remain  in  force  and  vigor  for  the  term  of  thirty 
years,  counted  from  the  date  of  registration,  save  in  the  case 
in  which  the  mark  is  affixed  to  articles  fabricated  without  the 
Republic  and  in  which  the  same  is  protected,  according  to  law, 
in  a  foreign  country  for  a  shorter  term,  in  which  case  the  mark 
registered  in  virtue  of  this  law  shall  cease  having  the  official 
protection  that  it  accords  at  the  same  time  that  the  protection 
terminates  under  the  foreign  laws  that  guarantee  it. 

ART.  8.  Any  mark  registered  in  the  manner  detailed,  dur- 
ing the  term  to  which  the  preceding  article  refers,  will  give  the 
right  to  the  person,  society,  or  corporation,  that'  registers  it,  to 
use  it  exclusively  in  so  far  as  it  refers  to  the  class  of  objects  or 
goods  that  substantially  are  of  the  same  descriptive  properties 
and  qualities  as  stated  in  the  registration. 

ART.  9.  During  the  six  months  prior  to  the  expiration  of 
the  term  of  thirty  years,  there  may  be  solicited  the  renewal  of 
the  registration  of  any  mark  of  manufacture  or  of  commerce, 
which  shall  be  granted  in  the  terms  of  the  original  registration, 


974  VENEZUELA 

in  an  instrument  drawn  up  on  paper  of  the  same  stamp  class. 
The  renewal  of  the  registration  shall  have  the  same  duration 
of  thirty  years  as  that  of  the  original  registration. 

ART.  10.  No  person  shall  have  the  right  of  legal  action 
that  claims  the  exclusive  right  as  to  a  mark  of  manufacture  or 
of  commerce  that  is  used,  or  the  use  of  which  is  pretended,  in 
an  illegal  business,  or  as  to  an  article  inherently  noxious,  or  as 
to  a  mark  that  has  been  obtained  fraudulently,  or  which  hafc 
been  formed  or  used  with  the  intent  of  deceiving  the  public  in 
the  purchase  or  use  of  any  merchandise. 

ART.  11.  Any  person  that  shall  attempt  the  registration 
of  any  mark  of  manufacture  or  of  commerce  for  himself  alone 
or  for  another,  or  that  solicits  from  the  Ministry  of  Fomento 
any  action  relative  to  this  matter,  making  therefor  fraudulent 
representations  or  declarations  by  word  or  in  writing,  and  by 
any  other  fraudulent  means,  shall  be  subject  to  the  penalties 
that  the  Penal  Code  stipulates  for  falsifiers  or  swindlers,  accord- 
ing to  the  case,  without  prejudice  of  civil  responsibility  as 
regards  third  parties. 

ART.  12.  Any  person  that  reproduces,  falsifies,  copies,  or 
imitates,  any  mark  of  manufacture  or  of  commerce  registered, 
or  affixes  it  to  merchandise  of  substantially  the  same  properties 
and  qualities  as  those  mentioned  in  the  registration,  shall  be 
subject  to  responsibility  at  law  for  damages  caused  by  the  illegal 
use  of  such  mark,  without  prejudice,  in  case  of  there  being  fraud, 
of  suffering  the  penalties  that  the  Penal  Code  stipulates. 

ART.  13.  Everything  relative  to  the  registration  of  which 
the  present  law  treats  shall  be  under  the  charge  of  the  Direction 
that  has  jurisdiction  in  the  Department  of  Concessions  or  Pat- 
ents of  Industries,  in  the  Ministry  of  Fomento. 

ART.  14.  The  Direction  of  which  the  preceding  treats  shall 
open  two  books  of  registrations,  which  shall  be  renewed  when- 
ever it  shall  be  necessary — one  for  the  registration  of  marks 
of  manufacture  and  the  other  for  that  of  marks  of  commerce; 
there  having  to  be  prepared  a  file  for  each  case  that  arises. 

ART.  15.  The  National  Executive  shall  dictate  the  meas- 
ures and  rules  that  shall  be  necessary  for  the  execution  of  the 
present  law;  and  shall  have  published  lithographically  every 
year  in  the  Memoria  of  the  department  the  marks  of  manufac- 
ture or  of  commerce  registered,  giving  access  to  such  as  so 
petition  to  the  registers  for  the  publication  of  engravings  of 
said  marks. 

ART.  16.  Marks  of  manufacture  or  of  commerce  of  foreign 
products  or  goods  registered  without  the  Republic  may  also  be 
registered  by  the  Ministry  of  Fomento,  even  when  there  shall 


VENEZUELA  975 

not  have  been  celebrated  international  treaties  or  agreements 
with  respect  to  the  matter,  as  regards  products  or  goods  that 
have,  in  the  opinion  of  the  National  Executive,  accredited  their 
utility  in  the  Republic. 

EXECUTIVE  RESOLUTION  OF  JUNE  30,  1920 

By  order  of  the  Provisional  President  of  the  Republic,  and 
in  conformity  with  Arts.  2  and  7  of  the  Law  concerning  Marks 
of  Manufacture  and  of  Commerce,  any  person  that  solicits  the 
registration  of  a  mark  must  state  the  particular  description  of 
the  goods  or  effects  comprised  in  the  class  for  which  it  is  peti- 
tioned, in  conformity  with  the  official  classification;  and,  if  it 
be  a  foreign  mark,  he  must  include  certification  of  the  registra- 
tion in  the  country  of  origin. 


ORDER  OF  AUGUST  14,  1917 
NAVAL  GOVERNMENT 

VIRGIN  ISLANDS  OF  THE  UNITED 
STATES* 

GOVEENMENT  HOUSE,  Si.  THOMAS 

PUBLICATION 

Residents  of  the  Virgin  Islands  of  the  United  States  may 
apply  for  .  .  .  trade  mark  registration  to  the  Commissioner  of 
Patents,  United  States  Patent  Office,  Department  of  the  In- 
terior, Washington,  D.  C. 

.  .  .  trade  mark  certificates  granted  by  the  United  States 
may  be  registered  in  the  Virgin  Islands  of  the  United  States, 
in  the  Office  of  the  Government  Secretary,  upon  payment  of  a 
fee  of  Francs  25.  and  the  expenses  of  publication  of  the  fact  of 
registration. 

Upon  payment  of  the  required  fee  and  expenses,  the  Govern- 
ment Secretary  shall  cause  a  notice  of  the  registration  to  be 
published  in  the  newspapers  of  St.  Thomas  and  in  the  news- 
papers of  St.  Croix. 

Upon  such  publication  the  protection  to  such  .  .  .  trade 
marks  granted  by  the  United  States  shall  be  extended  and  en- 
forced in  the  Virgin  Islands  of  the  United  States,  and  all  per- 
sons and  parties  will  be  bound  by  such  notice  of  the  rights  of 
.  .  .  registrant  of  trade  marks. 

NAVAL  GOVERNMENT  OF  THE  VIRGIN  ISLANDS  OF 
THE  UNITED  STATES,  August  14,  1917. 

(Signed)   JAMES  H.  OLIVER,  Governor. 

*  Formerly  the  Danish  West  Indies. 


ZANZIBAR 

DECREE  NO.  16  OF  JANUARY  1, 1917 

Title 

1.  This  Decree  may  be  cited  as  ' '  The  Patents,  Designs,  and 
Trade  Marks  Decree,  1917. "* 

Appointment  of  Registrar 

2.  (1)  The  British  Resident  may,  when  necessary,  appoint 
a  Registrar  of  Patents,  Designs,  and  Trade  Marks  (in  this  De- 
cree called  "the  Registrar"),  with  an  office  to  be  called  the 
Registry  of  Patents,  Designs,  and  Trade  Marks  (in  this  Decree 
called  "the  Registry"). 

(2)  The  term  "Registrar"  shall  include  any  Deputy  Regis- 
trar or  person  acting  under  the  authority  of  such  Registrar. 

Register 

3.  There  shall  be  kept  at  the  Registry  ...  a  book  called 
"The  Register  of  Trade  Marks." 

To  whom  certificates  of  registration  may  be  granted 

5.  A  certificate  of  registration  ...  of  any  trade  mark 
may  be  granted  in  Zanzibar  to  any  person  who  in  the  United 
Kingdom  or  India  is  the  registered  proprietor  of  such  trade 
mark,  or  to  any  person  holding  a  certificate  from  a  competent 
authority  in  any  British  possession,  or  to  any  person  to  whom 
all  interest  in  such  .  .  .  trade  mark  in  respect  of  Zanzibar  has 
been  assigned. 

Procedure 

6.  Every  application  .  .  .  for  registration  of  a  trade  mark 
under  this  Decree  shall  be  addressed  to  the  Registrar,  and  there 
shall  be  transmitted  with  such  application,  so  far  as  the  same 
shall  be  applicable : 

(1)  two  copies  of  the  .  .  .  certificate  of  registration; 

l»  !»'  1*1  I*  '«:  )••,••  i«. 

(4)  three  exact  representations  or  specimens  of  the  .  .  . 
trade  mark ; 

(5)  a  certificate  from  the  registering  authority  in  the  coun- 
try of  origin  that  the  applicant  ...  is  the  registered  proprietor 
in  the  United  Kingdom,  India  or  a  British  possession  of  the  .  .  . 
trade  mark  for  which  protection  is  asked,  or  that  he  is  the  person 
to  whom  all  interest  in  such  .  .  .  trade  mark  in  respect  of  Zan- 
zibar has  been  assigned. 

*  Provisions  not  relating  to  trade  marks  are  omitted. 


978  ZANZIBAR 

Applications  to  be  filed  and  recorded 

7.  (1)  The  Registrar  shall  file  every  such  application  and 
the  enclosures  thereto  in  the  register,  and,  subject  to  the  other 
provisions  of  this  section,  shall  cause  to  be  made  in  the  proper 
register  in  the  prescribed  manner  an  entry  of  the  nature  of 
the  .  .  .  trade  mark  and  of  the  filing  of  the  application  and  of 
the  enclosures  thereto. 

Removal  of  identical  trade  marks  from  the  register 

(2)  The  Registrar,  upon  the  passing  of  this  Decree,  shall 
examine  the  register  ...  of  trade  marks,  and  shall  erase  from 
the  register  any  .   .   .  trade  mark  substantially  identical  with 
a  ...  trade  mark  previously  registered :  Provided  always  that 
at  least  seven  days '  notice  in  writing  shall  be  given  by  the  Regis- 
trar of  his  intention  to  erase  such  .   .  .  trade  mark  to  the  pro- 
prietor thereof  in  Zanzibar,  or  his  agent,  and  an  opportunity 
given  to  such  proprietor  or  his  agent  to  show  cause  why  such 
.  .  .  trade  mark  should  not  be  erased. 

Refusal  to  register  identical  trade  marks 

(3)  The  Registrar  may  refuse  any  application  to  register 
a  ...  trade  mark  upon  the  ground  that  it  is  substantially  iden- 
tical with  a  ...  trade  mark  already  registered. 

Appeal  from  such  removal  or  refusal  to  register 

(4)  An  appeal  from  the  decision  of  the  Registrar  upon  any 
matter  under  sub-section  (2)  or  (3)  hereof  shall,  if  filed  within 
one  month  of  such  decision,  lie  to  His  Britannic  Majesty's  Court 
for  Zanzibar. 

Issue  of  certificates  of  registration 

8.  A  certificate  in  duplicate  in  the  prescribed  form  of  the 
entry  in  the  Register  shall,  when  the  application  is  granted,  be 
made  under  the  hand  and  seal  of  the  Registrar.    One  copy  of 
such  certificate  shall  be  issued  to  the  applicant  and  one  copy 
shall  be  filed  by  the  Registrar.    Such  certificate  shall  be  the  .  .  . 
certificate  of  the  registration  of  the  .  .  .  trade  mark  .  .  .  and 
shall  confer  upon  the  person  obtaining  the  same,  or  other  the 
lawful  holder  thereof  within  the  limits  of  Zanzibar,  every  right, 
title  and  advantage  which  the  holder  of  ...  a  certificate  of  the 
registration  of  a  .  .   .  trade  mark  has  in  England  in  respect  of 
such  .  .  .  trade  mark:  Provided  that  such  certificate  shall  be 
null  and  void  whenever  the  .   .   .  certificate  to  which,  it  refers 
shall  finally  cease. 

Order  affecting  Registrar  may  be  made  by  His  Britannic 
Majesty's  Court 

9.  Any  order  requiring  the  Registrar  to  do  or  abstain  from 
doing  anything  under  this  Decree  may  be  made  by  a  Judge  of 


ZANZIBAR  979 

His  Britannic  Majesty's  Court  on  a  summons  in  chambers. 

Certificate  of  Registrar  to  be  evidence 

10.  A  certificate  purporting  to  be  under  the  hand  of  the 
Registrar  as  to  any  entry,  matter,  or  thing  which  he  is  author- 
ized by  this  Decree,  or  any  rules  made  thereunder,  to  make  or 
do,  shall  be  primd  facie  evidence  of  the  entry  having  been  made, 
and  of  the  contents  thereof,  and  of  the  matter  or  thing  having 
been  done  or  left  undone. 

Sealed  copies  to  be  evidence 

11.  Printed  or  written  copies  or  extracts  purporting  to  be 
certified  by  the  Registrar  and  sealed  with  the  seal  of  the  Regis- 
try of  or  from  registers  and  other  books  or  documents  kept  there 
shall  be  admitted  in  evidence  in  all  Zanzibar  Courts,  and  in  all 
proceedings,  without  further  proof    or    a    production  of  the 
original. 

His  Britannic  Majesty's  Court  to  afford  all  relief 

12.  (1)  His  Britannic  Majesty's  Court  shall  have  power, 
in  accordance  with  the  provisions  of  the  Patents,  Designs,  and 
Trade  Marks  Acts  of  England,  to  grant,  either  absolutely  or  on 
such  terms  and  conditions  as  shall  seem  just,  all  such  remedies 
as  any  person  may  appear  to  be  entitled  to  in  respect  of  either 
claim  to  or  defence  of  any  right,  title  or  interest  in  relation  to 
any  .   .   .  registration  in  force  in  Zanzibar  under  a  certificate 
granted  under  this  Decree:  Provided  always  that  no  such  Act 
passed  after  this  Decree  coming  into  force  shall  apply  to  Zanzi- 
bar until  it  shall  be  applied  by  Decree. 

(2)  Nothing  in  this  section  contained  shall  entitle  the  holder 
of  any  certificate  of  entry  to  recover  damages  for  infringements 
of  any  .  .  .  trade  mark  happening  prior  to  the  actual  date  of 
the  grant  of  such  certificate  of  entry. 

"Passing-off"  action 

13.  Nothing  in  this  Decree  contained  shall  be  deemed  to 
affect  rights  of  action  against  any  person  for  passing  off  goods 
as  those  of  another  person  or  the  remedies  in  respect  thereof. 

False  entry 

14.  If  any  person  makes  or  causes  to  be  made  a  false  entry 
in  any  register  kept  under  this  Decree,  or  a  writing  falsely  pur- 
porting to  be  a  copy  of  any  entry  in  any  such  register,  or  pro- 
duces, or  tenders,  or  causes  to  be  produced  or  tendered  in  evi- 
dence any  such  writing,  knowing  the  entry  or  writing  to  be  false, 
he  shall  be  liable  on  conviction  to  imprisonment,  with  or  without 
hard  labour,  for  a  term  not  exceeding  two  years,  or  to  fine,  or 
both. 


980  ZANZIBAR 

Unauthorised  use  of  the  Royal  Arms  or  the  Sultan's  Crest 

15.  (1)  If  any  person,  without  the  authority  of  His  Maj- 
esty, uses  in  connection  with  any  trade,  business,  calling  or  pro- 
fession, the  Royal  Arms  (or  arms  so  closely  resembling  the 
same  as  to  be  calculated  to  deceive)  in  such  manner  as  to  be  cal- 
culated to  lead  to  the  belief  that  he  is  duly  authorized  so  to  use 
the  Royal  Arms,  or  if  any  person,  without  the  authority  of  His 
Majesty  or  of  a  member  of  the  Royal  Family,  uses  in  connection 
with  any  trade,  business,  calling  or  profession  any  device,  em- 
blem or  title  in  such  manner  as  to  be  calculated  to  lead  to  the 
belief  that  he  is  employed  by  or  supplies  goods  to  His  Majesty 
or  such  member  of  the  Royal  Family,  he  shall  be  liable  on  con- 
viction to  a  fine  not  exceeding  three  hundred  rupees :  Provided 
that  nothing  herein  shall  be  construed  as  affecting  the  right,  if 
any,  of  the  proprietor  of  a  trade  mark  containing  any  such  arms, 
device,  emblem  or  title  to  continue  to  use  such  trade  mark. 

(2)  The  provisions  of  sub-section  (1)  hereof  shall  apply 
similarly  in  the  case  of  the  use  of  the  crest  of  His  Highness  the 
Sultan  of  Zanzibar. 

Offences 

16.  ......... 

(3)  Any  person  who  represents  any  trade  mark  as  regis- 
tered which  is  not  so  shall  be  liable  for  every  offence  on  convic- 
tion to  a  fine  not  exceeding  Rs.  75. 

A  person  shall  be  deemed,  for  the  purposes  of  this  section, 
to  represent  that  a  trade  mark  is  registered  if  he  uses  in  con- 
nection with  the  trade  mark  the  word  " registered,*'  or  any  word 
or  words  expressing  or  implying  that  registration  has  been  ob- 
tained for  the  trade  mark. 

(4)  Provided  always  that  if  the  person  alleged  to  have  com- 
mitted an  offence  under  this  section  shall  show  to  the  satisfac- 
tion of  the  Court  that  the  said  .  .  .  trade  mark  is  in  fact  .  .  . 
registered  under  the  provisions  of  the  law  in  force  in  England, 
such  representation  or  sale  shall  not  constitute  an  offence  under 
this  section. 

Unauthorised  use  of  the  words  "Registry  of  Patents,"  etc. 

17.  If  any  person  uses  on  his  place  or  business  or  any 
document  issued  by  him  or  otherwise  the  words  "  Registry  of 
Patents,  Designs,  or  Trade  Marks,"  or  any  other  words  sug- 
gesting that  his  place  of  business  is  officially  connected  with,  or 
is,  the  Registry  of  Patents,  Designs,  or  Trade  Marks,  he  shall 
be  liable  on  conviction  to  a  fine  not  exceeding  Rs.  300. 
Prohibition  of  use  of  emblem  of  red  cross  on  white  ground,  etc. 

18.  (1)  It  shall  not  be  lawful  for  any  person  to  use  for 


ZANZIBAR  981 

the  purposes  of  his  trade  or  business,  or  for  any  other  purpose 
whatsoever,  without  the  authority  in  writing  of  the  Army  Coun- 
cil of  Great  Britain,  the  heraldic  emblem  of  the  red  cross  on  a 
white  ground  formed  by  reversing  the  Federal  colours  of  Swit- 
zerland, or  the  words  "Red  Cross"  or  "Geneva  Cross,"  and  if 
any  person  acts  in  contravention  of  this  provision,  he  shall  be 
guilty  of  an  offence  against  this  Decree,  and  shall  be  liable  on 
conviction  to  a  fine  not  exceeding  Rs.  150,  and  to  forfeit  any 
goods  upon  or  in  connection  with  which  the  emblem  or  words 
were  used. 

(2)  Where  a  company  or  society  is  guilty  of  any  such  con- 
travention, without  prejudice  to  the  liability  of  the  company  or 
society,  every  director,  manager,  secretary  and  other  officer  of 
the  company  or  society  who  is  knowingly  a  party  to  the  contra- 
vention shall  be  guilty  of  an  offence  against  this  Decree  and 
liable  on  conviction  to  the  like  penalty. 

(3)  Nothing  in  this  section  shall  affect  the  right  (if  any) 
of  the  proprietor  of  a  trade  mark  registered  under  the  English 
Acts  before  the  passing  of  this  Decree,  and  containing  any  such 
emblem  or  words,  to  continue  to  use  such  trade  mark  for  a 
period  of  four  years  from  the  30th  June,  1916,  or  such  part  of 
the  said  four  years  as  the  said  trade  mark  shall  be  duly  regis- 
tered under  the  English  Acts. 

(4)  Proceedings  under  this  section  shall  not  be  instituted 
without  the  consent  of  the  Attorney-General. 

Report  of  Registrar 

19.  The  Registrar  shall  on  the  31st  December  in  every  year 
issue  a  report  respecting  the  execution  by  him  of  this  Decree, 
and  such  report  shall  be  sent  to  His  Britannic  Majesty's  Judge 
for  inclusion  in  his  annual  report. 

Power  to  make  rules 

20.  The  British  Resident  may  make  rules  (1)  prescribing 
the  forms  to  be  used  under  this  Decree,  (2)  providing  for  and 
regulating  the  search  and  inspection  of  the  Registers,  (3)  other- 
wise regulating  the  practice  of  registration  under  this  Decree, 
(4)  prescribing  the  fees  and  fixing  the  charges  to  be  made  for 
any  act,  matter  or  thing  under  this  Decree  to  be  done  or  ob- 
served, and  (5)  generally  for  the  better  carrying  into  effect  of 
the  provisions  of  this  Decree. 

Provided  always  that  until  such  rules  are  made  and  pub- 
lished the  practice  hitherto  in  force  shall  continue  and  the  fees 
hitherto  charged  shall  continue  to  be  charged. 


CONVENTIONS* 


ARTICLE  1.  The  contracting  countries  constitute  a  state  of 
Union  for  the  protection  of  industrial  property. 

ART.  2.  The  subjects  or  citizens  of  each  of  the  contracting 
countries  shall  enjoy,  in  all  the  other  countries  of  the  Union, 
with  regard  to  ...  trade  marks,  trade  names,  the  statements 
of  place  of  origin,  suppression  of  unfair  competition,  the  advan- 
tages which  the  respective  laws  now  grant  or  may  hereafter 
grant  to  the  citizens  of  that  country.  Consequently,  they  shall 
have  the  same  protection  as  the  latter  and  the  same  legal  reme- 
dies against  any  infringements  of  their  rights,  provided  they 
comply  with  the  formalities  and  requirements  imposed  by  the 
National  laws  of  each  State  upon  its  own  citizens.  Any  obliga- 
tion of  domicile  or  of  establishment  in  the  country  where  the 
protection  is  claimed  shall  not  be  imposed  on  the  members  of 
the  Union. 

ART.  3.  The  subjects  or  citizens  of  countries  which  do  not 
form  part  of  the  Union,  who  are  domiciled  or  own  effective  and 
bona  fide  industrial  or  commercial  establishments  in  the  terri- 
tory of  any  of  the  countries  of  the  Union,  shall  be  assimilated 
to  the  subjects  or  citizens  of  the  contracting  countries.  *. 

ART.  4.  (a)  Any  person  who  shall  have  duly  filed  an  appli- 
cation for  a  ...  trade  mark,  in  one  of  the  contracting  coun- 
tries, or  the  successor  or  assignee  of  such  person  shall  enjoy, 
for  the  purpose  of  filing  application  in  the  other  countries,  and 
subject  to  the  rights  of  third  parties,  a  right  of  priority  during 
the  periods  hereinafter  specified. 

(b)  Consequently,  the  subsequent  filing  in  one  of  the  other 
countries  of  the  Union,  prior  to  the  expiration  of  such  periods, 
shall  not  be  invalidated  by  acts  performed  in  the  interval, 
especially  ...  by  the  use  of  the  mark. 


*Provisions  not  relating  to  trade  marks  are  omitted. 

|This  Convention  is  effective  as  to  the  following  countries :  Australia,  Austria, 
Belgium,  Brazil,  Bulgaria,  Ceylon,  Cuba,  Curasao,  Czechoslovakia,  Danzig  (Free 
City  of),  Denmark  and  the  Faroe  Islands,  Dominican  Republic,  Dutch  Indies,  Fin- 
land, France,  Algeria  and  Colonies,  Germany  and  Colonies,  Great  Britain,  Hungary, 
Italy,  Japan,  Jugoslavia,  Luxemburg,  Mexico,  Morocco  (French  Zone),  Netherlands, 
New  Zealand,  Norway,  Poland,  Portugal  (with  Azores  and  Maderia),  Rumania, 
Spain,  Surinam,  Sweden,  Switzerland,  Trinidad  and  Tobago,  Tunis,  United  States  of 
America. 


CONVENTIONS  983 

(c)  The  periods  of  priority  above  referred  to  shall  be 
.    .    .  four  months  for  .    .    .  trade  marks. 

(d)  Whoever  shall  wish  to  avail  himself  of  the  priority  of 
an  anterior  filing,  shall  be  required  to  make  a  declaration  show- 
ing the  date  and  the  country  of  this  filing.    Each  country  shall 
determine  at  what  moment,  at  the  latest,  this  declaration  must 
be  executed.    This  information  shall  be  mentioned  in  the  publi- 
cations issued  by  the  competent  Administration  .    .    .  The  con- 
tracting countries  shall  require  of  one  who  makes  a  declaration 
of  priority  the  production  of  a  copy  of  the  application  (speci- 
fication, drawings,  etc.)  previously  filed,  certified  to  be  a  true 
copy  by  the  Administration  which  shall  have  received  it.    This 
copy  shall  be  dispensed  from  any  legalisation.    It  may  be  re- 
quired that  it  be  accompanied  by  a  certificate  of  the  date  of 
filing,  issuing  from  this  Administration,  and  of  a  translation. 
Other  formalities  shall  not  be  required  for  the  declaration  of 
priority  at  the  time  of  the  filing  of  the  application.    Each  con- 
tracting country  shall  determine  the  consequences  of  the  omis- 
sion of  the  formalities  prescribed  by  the  present  article,  unless 
these  consequences  exceed  the  loss  of  the  right  of  priority. 

(e)  Later  other  justifications  can  be  demanded. 

ART.  6.  Every  trade  mark  regularly  registered  in  the 
country  of  origin  shall  be  admitted  to  registration  and  protected 
as  that  in  the  other  countries  of  the  Union. 

However,  there  may  be  refused  or  invalidated : 

1)  Marks  which  are  of  a  nature  to  infringe  rights  acquired 
by  third  parties  in  the  country  where  protection  is  claimed. 

2)  Marks  devoid  of  all  distinctive  character,  or  even  com- 
posed exclusively  of  signs  or  data  which  may  be  used  in  com- 
merce, to  designate  the  kind,   quality,   quantity,   destination, 
value,  place  of  origin  of  the  products  or  the  time  of  production, 
or  become  common  in  the  current  language  or  the  legal  and 
steady  customs  of  commerce  of  the  country  where  the  protec- 
tion is  claimed. 

In  the  estimation  of  the  distinctive  character  of  a  mark,  all 
the  circumstances  existing  should  be  taken  into  account,  par- 
ticularly the  duration  of  the  use  of  the  mark. 

3)  Marks  which  are  contrary  to  morals  or  public  order. 
The  country  where  the  applicant  has  his  principal  estab- 
lishment shall  be  considered  as  the  country  of  origin. 

If  this  principal  establishment  is  not  located  in  one  of  the 
countries  of  the  Union,  that  to  which  the  applicant  belongs  shall 
be  considered  as  country  of  origin. 

ART.  7.    The  nature  of  the  product  on  which  the  trade 


984  CONVENTIONS 

mark  is  to  be  applied  cannot,  in  any  case,  be  an  obstacle  to  the 
filing  of  the  mark. 

ABT.  1\.  The  contracting  countries  agree  to  admit  for 
filing  and  to  protect  marks  belonging  to  associations  the  exist- 
ence of  which  is  not  contrary  to  the  law  of  the  country  of  origin, 
even  if  these  associations  do  not  possess  an  industrial  or  com- 
mercial establishment. 

Each  country  shall  be  judge  of  the  special  conditions  under 
which  an  association  may  be  admitted  to  have  the  marks  pro- 
tected. 

ART.  8.  Trade  names  shall  be  protected  in  all  the  coun- 
tries of  the  Union  without  the  obligation  of  filing,  whether  it 
be  a  part  or  not  of  a  trade  mark. 

ABT.  9.  Any  product  bearing  illegally  a  trade  mark  or  a 
trade  name  shall  be  seized  at  importation  in  those  of  the  coun- 
tries of  the  Union  in  which  this  mark  or  this  trade  name  may 
have  a  right  to  legal  protection. 

If  the  laws  of  a  country  do  not  admit  of  seizure  on  impor- 
tation, the  seizure  shall  be  replaced  by  prohibition  of  impor- 
tation. 

The  seizure  shall  be  likewise  effected  in  the  country  where 
illegal  affixing  shall  have  been  made,  or  in  the  country  into 
which  the  product  shall  have  been  imported. 

The  seizure  shall  be  made  at  the  request  of  the  public  min- 
istry, or  any  other  competent  authority,  or  by  an  interested 
party,  individual  or  society,  in  conformity  to  the  interior  laws 
of  each  country. 

The  authorities  shall  not  be  required  to  make  the  seizure 
in  transit. 

If  the  laws  of  a  country  admit  neither  of  the  seizure  on 
importation  nor  the  prohibition  of  importation,  nor  seizure  in 
said  country,  these  measures  shall  be  replaced  by  the  acts  and 
means  which  the  law  of  such  country  would  assure  in  like  case 
to  its  own  citizens. 

ABT.  10.  The  provisions  of  the  preceding  article  shall  be 
applicable  to  any  product  bearing  falsely,  as  indication  of  place 
of  production,  the  name  of  a  definite  locality,  when  this  indica- 
tion shall  be  joined  to  a  fictitious  or  borrowed  trade  name  with 
an  intention  to  defraud. 

The  interested  party  is  considered  any  producer,  manufac- 
turer or  merchant,  engaged  in  the  production,  manufacture  or 
commerce  of  such  product,  and  established  either  in  the  locality 
falsely  indicated  as  place  of  production  or  in  the  region  where 
this  locality  is  situated. 

ABT.  10£.    All  the  contracting  countries  agree  to  assure 


CONVENTIONS  985 

to  the  members  of  the  Union  an  effective  protection  against 
unfair  competition. 

ART.  11.  The  contracting  countries  shall  accord,  in  con- 
formity with  their  national  laws,  a  temporary  protection  to 
.  .  .  trade  marks,  for  products  exhibited  at  international  expo- 
sitions, official  or  officially  recognized,  organized  in  the  terri- 
tory of  one  of  them. 

ABT.  12.  Each  of  the  contracting  countries  agrees  to  estab- 
lish a  special  service  for  Industrial  Property  and  a  central 
office  for  the  communication  to  the  public  of  ...  trade  marks. 

This  service  shall  publish,  as  often  as  possible,  an  official 
periodical. 

ART.  13.  The  international  Office  instituted  at  Berne  under 
the  name  of  "Bureau  international  pour  la  protection  de  la 
Propriete  industrielle  "  is  placed  under  the  high  authority  of 
the  Government  of  the  Swiss  Confederation,  which  regulates 
its  organization  and  supervises  its  operation. 

The  international  Bureau  shall  centralize  information  of 
any  nature  relative  to  the  protection  of  industrial  property,  and 
form  it  in  a  general  statistical  report  which  shall  be  distributed 
to  all  Administrations.  It  shall  proceed  to  considerations  of 
common  utility  interesting  to  the  Union  and  shall  edit,  with  the 
aid  of  the  documents  put  at  its  disposal  by  the  different  Admin- 
istrations, a  periodical  in  the  French  language  on  questions 
concerning  the  object  of  the  Union. 

Numbers  of  this  periodical,  like  all  the  documents  published 
by  the  international  Bureau,  shall  be  distributed  among  the 
Administrations  of  the  countries  of  the  Union,  in  proportion  to 
the  number  of  contributive  units  mentioned  below.  Copies  and 
supplementary  documents  which  shall  be  requested,  either  by 
the  said  Administrations,  or  by  societies  or  individuals,  shall 
be  paid  for  separately. 

The  international  Bureau  shall  hold  itself  at  all  times  at 
the  disposition  of  the  members  of  the  Union,  to  furnish  them 
special  information  of  which  they  may  have  need,  on  the  ques- 
tions relative  to  the  international  service  of  industrial  property. 
It  shall  make  an  annual  report  of  its  management  which  shall 
be  communicated  to  all  members  of  the  Union. 

The  official  language  of  the  international  Bureau  shall  be 
French. 

The  expense  of  the  international  Bureau  shall  be  borne  in 
common  by  the  contracting  countries.  They  may  not,  in  any 
case,  exceed  the  sum  of  sixty  thousand  francs  per  year. 

In  order  to  determine  the  contributive  part  of  each  of  the 
countries  in  this  sum  total  of  the  expenses,  the  contracting  coun- 


986  CONVENTIONS 

tries  and  those  which  later  join  the  Union  shall  be  divided  into 
six  classes,  each  contributing  in  proportion  to  a  certain  number 
of  units,  to-wit : 

Units. 

Class  1 25 

Class  2 20 

Class  3 15 

Class  4 10 

Class  5 5 

Class  6 3 

These  coefficients  shall  be  multiplied  by  the  number  of  coun- 
tries of  each  class,  and  the  sum  of  the  products  thus  obtained 
will  furnish  the  number  of  units  by  which  the  total  expenses  are 
to  be  divided.  The  quotient  will  give  the  amount  of  the  unit 
of  expense. 

Each  of  the  contracting  countries  shall  designate  at  the 
time  of  its  accession,  the  class  in  which  it  wishes  to  be  ranked. 

The  Government  of  the  Swiss  Confederation  shall  supervise 
the  expenses  of  the  international  Bureau,  make  necessary  ad- 
vances and  draw  up  annual  statements  of  accounts  which  shall 
be  communicated  to  all  the  other  Administrations. 

ART.  14.  The  present  Convention  shall  be  submitted  to 
periodical  revisions  with  a  view  to  introducing  improvements 
in  it  of  a  nature  to  perfect  the  system  of  the  Union. 

To  this  end  Conferences  of  the  delegates  of  the  contract- 
ing countries  shall  be  held  successively  in  one  of  the  said 
countries. 

The  Administration  of  the  country  where  the  Conference 
is  to  be  held  shall  prepare,  with  the  concurrence  of  the  inter- 
national Bureau  the  works  of  such  Conference. 

The  Director  of  the  international  Bureau  will  assist  at  the 
meetings  of  the  Conferences  and  take  part  in  the  discussions 
without  a  vote. 

ART.  15.  It  is  understood  that  the  contracting  countries 
reserve  to  themselves  respectively  the  right  to  make  separately, 
between  themselves,  special  arrangments  for  the  protection  of 
industrial  Property,  in  so  far  as  these  arrangements  may  not 
interfere  with  the  provisions  of  the  present  Convention. 

ART.  16.  The  countries  which  have  not  taken  part  in  the 
present  Convention  shall  be  permitted  to  adhere  to  it  upon  their 
request. 

Notice  of  adhesion  shall  be  made  through  diplomatic  chan- 
nels to  the  Government  of  the  Swiss  Confederation,  and  by  the 
latter  to  all  the  others. 

It  shall  entail  complete  adhesion  to  all  the  clauses  and 


CONVENTIONS  987 

admission  to  all  the  advantages  stipulated  by  the  present  Con- 
vention, and  shall  take  effect  one  month  after  the  notification 
made  by  the  Government  of  the  Swiss  Confederation  to  the 
other  unionist  countries,  unless  a  later  date  shall  have  been 
indicated  by  the  adhering  country. 

ART.  16£.  The  contracting  countries  have  the  right  to 
adhere  at  any  time  to  the  present  Convention  for  their  colonies, 
possessions,  dependencies  and  protectorates,  or  for  certain  ones 
of  them. 

They  may,  to  this  end,  either  make  a  general  declaration  by 
which  all  their  colonies,  possessions,  dependencies  and  protec- 
torates are  included  in  the  adherence,  or  expressly  name  those 
included  therein,  or  simply  indicate  those  excluded  from  it. 

This  declaration  shall  be  made  in  writing  to  the  Govern- 
ment of  the  Swiss  Confederation  and  by  the  latter  made  to  all 
the  others. 

The  contracting  countries  can,  under  like  conditions,  re- 
nounce the  Convention  for  their  colonies,  possessions,  depen- 
dencies and  protectorates,  or  for  certain  ones  of  them. 

ART.  17.  The  fulfillment  of  the  reciprocal  obligations  con- 
tained in  the  present  Convention  is  subordinated,  in  so  far  as 
need  be,  to  compliance  with  the  formalities  and  regulations 
established  by  the  constitutional  laws  of  those  of  the  contract- 
ing countries  which  are  bound  to  secure  the  application  of  the 
same  which  they  engage  to  do  with  the  least  possibly  delay. 

ART.  17i.  The  Convention  shall  remain  in  force  an  indefi- 
nite time,  until  the  expiration  of  one  year  from  the  day  when 
the  renunciation  shall  be  made. 

This  renunciation  shall  be  addressed  to  the  Government  of 
the  Swiss  Confederation.  It  shall  effect  only  the  country  giving 
such  notice,  the  Convention  remaining  operative  as  to  the  other 
contracting  countries. 

ART.  18.  The  present  Act  shall  be  ratified,  and  the  ratifi- 
cation filed  in  Washington,  at  the  latest,  April  1,  1913.  It  shall 
be  put  into  execution,  among  the  countries  which  shall  have 
ratified  it,  one  month  after  the  expiration  of  this  period  of  time. 

This  Act,  with  its  Final  Protocol,  shall  replace,  in  the  rela- 
tions of  the  countries  which  shall  have  ratified  it:  the  Conven- 
tion of  Paris,  March  20,  1883;  the  Final  Protocol  annexed  to 
that  Act;  the  Protocol  of  Madrid,  April  15,  1891,  relating  to 
the  dotation  of  the  international  Bureau,  and  the  additional 
Act  of  Brussels,  December  14,  1900.  However,  the  Acts  cited 
shall  remain  binding  on  the  countries  which  shall  not  have  rati- 
fied the  present  Act. 

ART.  19.    The  present  Act  shall  be  signed  in  a  single  copy, 


988  CONVENTIONS 

which  shall  be  filed  in  the  archives  of  the  Government  of  the 
United  States.  A  certified  copy  shall  be  sent  by  the  latter  to 
each  of  the  unionist  Governments. 

In  Witness  Whereof,  the  respective  Plenipotentiaries  have 
signed  the  present  Act. 

Done  at  Washington,  in  a  single  copy,  the  second  day  of 
June,  1911. 

FINAL  PROTOCOL 

At  the  time  of  proceeding  to  the  signing  of  the  Act  con- 
cluded on  this  day,  the  undersigned  Plenipotentiaries  are  agreed 
upon  the  following: 

AD  ARTICLE  1.  The  words  "Propriete  industrielle "  (In- 
dustrial Property)  shall  be  taken  in  their  broadest  acceptation; 
they  extend  to  all  production  in  the  domain  of  agricultural  in- 
dustries (wines,  grains,  fruits,  animals,  etc.),  and  extractives 
(minerals,  mineral  waters,  etc.). 

AD  ART.  2.    (a)   .          .          .          . 

(b)  It  is  understood  that  the  provision  in  Art.  2  which 
dispenses  the  members  of  the  Union  from  the  obligation  of 
domicile  and  of  establishment  has  an  interpretable  character 
and  must,  consequently,  be  applied  to  all  the  rights  granted  by 
the  Convention  of  March  20, 1883,  before  the  entrance  into  force 
of  the  present  Act. 

(c)  It  is  understood  that  the  provisions  of  Art.  2  do  not 
infringe  the  laws  of  each  of  the  contracting  countries,  in  regard 
to  the  procedure  followed  before  the  courts  and  the  competency 
of  those  courts,  as  well  as  the  election  of  domicile  or  the  decla- 
ration of  the  selection  of  an  attorney  required  by  the  laws  on 
.  .  .  marks,  etc. 

AD  ART.  4.     .  .  .  .  .  .  .  . 

AD  ART.  6.  It  is  understood  that  the  provision  of  the  first 
paragraph  of  Art.  6  does  not  exclude  the  right  to  require  of 
the  depositor  a  certificate  of  regular  registration  in  the  country 
of  origin,  issued  by  competent  authority. 

It  is  understood  that  the  use  of  badges,  insignia  or  public 
decorations  which  shall  not  have  been  authorized  by  competent 
powers,  or  the  use  of  official  signs  and  stamps  of  control  and 
of  guaranty  adopted  by  a  unionist  country,  may  be  considered 
as  contrary  to  public  order  in  the  sense  of  No.  3  of  Art.  6. 

However,  marks,  which  contain,  with  the  authorization  of 
competent  powers,  the  reproduction  of  badges,  decorations  or 
public  insignia,  shall  not  be  considered  as  contrary  to  public 
order. 

It  is  understood  that  a  mark  shall  not  be  considered  as 


CONVENTIONS  989 

contrary  to  public  order  for  the  sole  reason  that  it  is  not  in 
conformity  with  some  provision  of  laws  on  marks,  except  in  the 
case  where  such  provision  itself  concerns  public  order. 

The  present  Final  Protocol,  which  shall  be  ratified  at  the 
same  time  as  the  Act  concluded  on  this  day,  shall  be  considered 
as  forming  an  integral  part  of  this  Act,  and  shall  be  of  like 
force,  value  and  duration. 

In  Witness  Whereof,  the  respective  Plenipotentiaries  have 
signed  the  present  Protocol. 

Done  at  Washington,  in  a  single  copy,  June  2,  1911. 


ARRANGEMENT  OF  MADRID,  OF  APRIL  14,  1891,  RE- 
VISED   AT    BRUSSELS,    DECEMBER    14,    1900,    AT 
WASHINGTON,  JUNE  2,  1911,  FOR  THE  INTERNA 
TIONAL  REGISTRATION  OF  MARKS  OF  MANUFAC- 
TURE AND  OF  COMMERCE.* 

ARTICLE  1.  The  subjects  or  citizens  of  any  one  of  the  con- 
tracting countries  may  be  assured,  in  all  the  other  countries,  of 
the  protection  of  their  marks  of  manufacture  or  of  commerce 
accepted  on  deposit  in  the  country  of  origin,  on  deposit  of  the 
said  marks  with  the  International  Bureau  at  Berne,  effected 
through  the  intermediary  of  the  Administration  of  the  said 
country  of  origin. 

ART.  2.  Likened  to  the  subjects  or  citizens  of  the  contract- 
ing countries  are  the  subjects  or  citizens  of  countries  not  having 
adhered  to  the  present  Arrangement  that,  within  the  territory 
of  the  limited  Union  constituted  by  this  latter,  shall  satisfy  the 
conditions  stipulated  by  Art.  3  of  the  general  Convention. 

ART.  3.  The  International  Bureau  shall  forthwith  regis- 
ter the  marks  deposited  in  conformity  with  the  first  article.  It 
shall  notify  this  registration  to  the  different  Administrations. 
The  marks  registered  shall  be  published  in  a  periodic  sheet 
issued  by  the  International  Bureau,  through  utilization  of  the 
indications  contained  in  the  application  for  registration  and 
of  the  cliche  (electrotype)  furnished  by  the  depositor. 

If  the  depositor  makes  claim  of  the  color  as  a  distinctive 
element  of  his  mark,  he  shall  be  bound : 

1)  To  so  declare,  and  to  include  with  his  deposit  a  men- 
tion indicating  the  color  or  the  combination  of  colors  claimed: 

2)  To  join  to  his  application  facsimilies  of  the  said  mark 
in  color,  which  shall  be  annexed  to  the  notifications  made  by  the 
International  Bureau.     The  number  of  these  facsimiles  shall 
be  fixed  by  the  Regulation  of  Execution. 

In  view  of  the  publicity  to  be  made,  in  the  contracting 
countries,  to  marks  registered,  each  Administration  will  re- 
ceive gratuitously  from  the  International  Bureau  the  number 


*  This  Convention  is  operative  as  to :  Austria,  Belgium,  Brazil,  Cuba,  Spain, 
France  (including  Algeria  and  Colonies),  Hungary,  Italy,  Morocco  (excepting  the 
Spanish  Zone),  Mexico,  The  Netherlands,  Dutch  Indies,  Surinam,  Curasao,  Portugal 
(with  Azores  and  Madeira),  Rumania,  Jugoslavia,  Switzerland,  Czechoslovakia  and 
Tunis. 


CONVENTIONS  991 

of  copies  of  the  above  mentioned  publication  that  it  shall  please 
it  to  demand.  This  publicity  will  be  considered  in  all  the 
contracting  countries  as  amply  sufficient,  and  no  other  may  be 
required  from  the  depositor. 

AET.  4.  Counting  from  the  registration  thus  effected 
with  the  International  Bureau,  the  protection  of  the  mark  in 
each  one  of  the  contracting  countries  will  be  the  same  as  if  this 
mark  had  been  therein  directly  deposited. 

Any  mark  internationally  registered  within  the  four 
months  that  follow  the  date  of  the  deposit  in  the  country  of 
origin  shall  enjoy  the  right  of  priority  established  by  Art.  4 
of  the  general  Convention. 

ART.  4  bis.  When  a  mark  already  deposited  in  one  or 
several  of  the  contracting  countries,  has  been  subsequently  reg- 
istered by  the  International  Bureau  in  the  name  of  the  same 
titular  or  of  his  assign,  the  international  registration  shall  be 
considered  as  substituted  for  the  prior  national  registrations, 
without  prejudice  to  rights  acquired  by  reason  of  these  latter. 

ART.  5.  In  the  countries  in  which  their  legislation  so 
authorizes  them,  the  Administrations  to  which  the  Interna- 
tional Bureau  shall  notify  the  registration  of  a  mark  shall  be 
authorized  to  declare  that  the  protection  may  not  be  accorded 
to  this  mark  in  their  territory.  Such  a  refusal  may  be  ques- 
tioned only  under  the  conditions  that  would  be  applied,  by 
virtue  of  the  general  Convention,  to  a  mark  deposited  for 
national  registration. 

They  must  exercise  this  authority  within  the  delay  fore- 
seen by  their  national  law,  and,  at  latest,  within  the  year  of 
the  notification  foreseen  by  Art.  3  by  indicating  to  the  Inter- 
national Bureau  their  motives  of  refusal. 

The  said  declaration,  so  notified  to  the  International 
Bureau,  shall  be  by  it  transmitted  without  delay  to  the  Admin- 
istration of  the  country  of  origin  and  to  the  proprietor  of  the 
mark.  The  party  interested  shall  have  the  same  means  of 
recourse  as  if  the  mark  had  been  by  him  directly  deposited  in 
the  country  in  which  the  protection  is  refused. 

ART.  5  bis.  The  International  Bureau  shall  deliver  to  any 
person  that  shall  make  request  therefor,  subject  to  a  fee  fixed 
by  the  Regulation  of  Execution,  a  copy  of  the  statements  in- 
scribed in  the  Register  relative  to  a  determined  mark. 

ART.  6.  The  protection  resulting  from  registration  with 
the  International  Bureau  shall  endure  for  twenty  years,  count- 
ing from  this  registration,  but  it  may  not  be  invoked  in  favor 


992  CONVENTIONS 

of  a  mark  that  no  longer  enjoys  legal  protection  in  the  country 
of  origin. 

ART.  7.  The  registration  may  always  be  renewed  by  fol- 
lowing the  prescriptions  of  Arts.  1  and  3. 

Six  months  before  the  expiration  of  the  term  of  protection, 
the  International  Bureau  shall  forward  an  official  notice  to  the 
Administration  of  the  country  of  origin  and  to  the  proprietor 
of  the  mark. 

ART.  8.  The  Administration  of  the  country  of  origin  will 
fix  at  its  pleasure,  and  collect  to  its  profit,  a  fee  that  it  shall 
claim  from  the  proprietor  of  the  mark  the  international  regis- 
tration whereof  is  applied  for.  To  this  fee  there  shall  be 
added  an  international  emolument  of  one  hundred  francs  for 
the  first  mark,  and  fifty  francs  for  each  of  the  following  marks, 
deposited  at  the  same  time  by  the  same  proprietor.  The  annual 
proceeds  of  this  charge  shall  be  distributed  in  equal  parts 
among  the  contracting  countries,  under  the  care  of  the  Inter- 
national Bureau,  after  deduction  of  the  common  expenses 
necessitated  by  the  execution  of  this  Arrangement. 

ART.  8  bis.  The  proprietor  of  an  international  mark  may 
always  renounce  protection  in  one  or  several  of  the  contract- 
ing countries,  by  means  of  a  declaration  forwarded  to  the  Ad- 
ministration of  the  country  of  origin  of  the  mark,  to  be  com- 
municated to  the  International  Bureau,  which  shall  notify  it  to 
the  countries  that  this  renunciation  concerns. 

ABT.  9.  The  Administration  of  the  country  of  origin  shall 
notify  the  International  Bureau  of  avoidances,  erasures,  renun- 
ciations, transmissions,  and  other  changes  that  shall  take  place 
as  to  the  ownership  of  a  mark. 

The  International  Bureau  shall  register  these  changes, 
notify  them  to  the  Administrations  of  the  contracting  countries, 
and  publish  them  forthwith  in  its  journal. 

The  same  procedure  shall  be  followed  when  the  proprietor 
of  the  mark  shall  petition  for  reducing  the  list  of  products  to 
which  it  is  applied. 

The  subsequent  addition  of  a  new  product  to  the  list  may  be 
obtained  only  through  a  new  deposit  effected  in  conformity 
with  the  prescriptions  of  Art.  3.  Likened  to  addition  is  the 
substitution  of  one  product  for  another. 

ART.  9  bis.  When  a  mark  inscribed  in  the  International 
Register  shall  be  transferred  to  a  person  established  in  a  con- 
tracting country  other  than  the  country  of  origin  of  the  mark, 
the  assignment  shall  be  notified  to  the  International  Bureau  by 


CONVENTIONS  993 

the  Administration  of  this  same  country  of  origin.  The  Inter- 
national Bureau  shall  register  the  assignment  and,  after  having 
received  the  assent  of  the  Administration  to  which  the  new 
titular  is  subject,  it  shall  notify  it  to  the  other  Administrations 
and  publish  it  in  its  journal. 

The  present  disposition  is  not  intended  to  modify  the  legis- 
lations of  the  contracting  countries  that  prohibit  the  transfer 
of  the  mark  without  the  simultaneous  assignment  of  the  indus- 
trial or  commercial  establishment  the  products  of  which  it  dis- 
tinguishes. 

No  transfer  of  a  mark  inscribed  in  the  International  Begis- 
ter,  made  to  the  profit  of  a  person  not  established  in  one  of  the 
contracting  countries,  shall  be  registered. 

ART.  10.  The  Administrations  shall  regulate  with  com- 
mon accord  the  details  relative  to  the  execution  of  the  present 
Arrangement. 

ART.  11.  The  countries  of  the  Union  for  the  Protection  of 
Industrial  Property  that  have  not  taken  part  in  the  present 
Arrangement  shall  be  admitted  to  adhere  thereto  on  their  re- 
quest, and  subject  to  the  formalities  prescribed  by  the  general 
Convention. 

As  soon  as  the  International  Bureau  shall  be  informed  that 
a  country  or  one  of  its  colonies  has  adhered  to  the  present 
Arrangement,  it  shall  address  to  the  Administration  of  this 
country,  in  conformity  with  Art.  3,  a  collective  notification  of 
the  marks  that,  at  this  moment,  enjoy  international  protection. 

This  notification  will  assure,  in  itself,  to  the  said  marks  the 
benefit  of  the  preceding  provisions  in  the  territory  of  the 
adherent  country,  and  will  give  course  to  the  delay  of  one  year 
during  which  the  Administration  interested  may  make  the  dec- 
laration foreseen  by  Art.  5. 

ART.  12.  The  present  Arrangement  shall  be  ratified  and 
the  ratifications  thereof  shall  be  deposited  at  Washington,  at 
latest,  April  1, 1913. 

It  shall  become  of  effect  one  month  after  the  expiration  of 
this  delay,  and  shall  have  the  same  force  and  duration  as  the 
general  Convention. 


ARRANGEMENT  OF  MADRID,  OF  APRIL  14,  1891,  AS 
REVISED  AT  WASHINGTON,  JUNE  2,  1911,  CON- 
CERNING THE  REPRESSION  OF  FALSE  INDICA- 
TIONS OF  ORIGIN  OF  MERCHANDISE.* 

ARTICLE  1.  Any  product  bearing  a  false  indication  of 
origin  in  which  one  of  the  contracting  countries,  or  a  place 
situated  in  one  of  them,  shall  be  directly  or  indirectly  indicated 
as  the  place  of  origin,  shall  be  seized  on  importation  into  any 
of  the  said  countries. 

Seizure  shall  likewise  be  made  in  the  country  in  which  the 
false  indication  of  origin  shall  have  been  affixed,  or  in  that  one 
in  which  there  shall  have  been  introduced  the  product  provided 
with  this  false  indication. 

If  the  legislation  of  a  country  does  not  admit  of  seizure 
on  importation,  this  seizure  shall  be  replaced  by  the  prohibition 
of  importation. 

If  the  legislation  of  a  coluntry  does  not  admit  of  seizure 
within  the  country,  this  seizure  shall  be  replaced  by  the  actions 
and  means  that  the  law  of  this  country  assures  in  such  a  case  to 
nationals. 

ART.  2.  The  seizure  shall  be  made  on  petition,  either  of 
the  Public  Minister,  or  of  any  competent  authority,  for  example, 
the  Customs  Administration,  or  by  an  interested  party,  individ- 
ual or  society,  in  accordance  with  the  domestic  legislation  of 
each  country. 

ART.  3.  The  present  dispositions  constitute  no  obstacle  to 
the  vendor  indicating  his  name  or  his  address  upon  products 
originating  in  a  country  different  from  that  of  sale ;  however,  in 
this  case,  the  address  or  the  name  must  be  accompanied  by  the 
precise  indication — and  in  conspicuous  characters — of  the  coun- 
try or  of  the  place  of  fabrication  or  production. 

ART.  4.  The  tribunals  of  each  country  will  have  to  decide 
what  are  the  appellations  that,  by  reason  of  their  generic  char- 
acter, are  outside  the  provisions  of  the  present  Arrangement — 
regional  appellations  of  origin  of  products  of  the  vine  not 
being,  however,  comprised  in  the  reservation  specified  by  this 
article. 

*  This  Convention  is  operative  as  to:  Brazil,  Cuba,  Spain,  France  (including 
Algeria  and  Colonies),  Great  Britain,  New  Zealand,  Morocco  (excepting  the  Spanish 
Zone),  Portugal  (with  Azores  and  Madeira),  Switzerland,  Czechoslovakia  and  Tunis. 


CONVENTIONS  995 

ART.  5.  The  States  of  the  Union  for  the  Protection  of 
Industrial  Property  that  have  not  taken  part  in  the  present 
Arrangement  shall  be  admitted  to  adhere  thereto  on  their 
request,  and  subject  to  the  formality  prescribed  by  Art.  16  of 
the  general  Convention. 

ABT.  6.  The  present  Arrangement  shall  be  ratified,  and 
the  ratifications  thereof  shall  be  deposited,  at  latest,  on  April 
1,  1913. 

It  shall  become  of  effect  one  month  after  the  expiration  of 
this  delay,  and  shall  have  the  same  force  and  duration  as  the 
general  Convention. 


PAN-AMERICAN  CONVENTION,  SIGNED  AT  BUENOS 
AIRES,  AUGUST  20,  1910 

ARTICLE  I.  The  signatory  Nations  enter  into  this  Conven- 
tion for  the  protection  of  trade  marks  and  commercial  names. 

ART.  II.  Any  mark  duly  registered  in  one  of  the  signa- 
tory States  shall  be  considered  as  registered  also  in  the  other 
States  of  the  Union,  without  prejudice  to  the  rights  of  third 
persons  and  to  the  provisions  of  the  laws  of  each  State  govern- 
ing the  same. 

In  order  to  enjoy  the  benefit  of  the  foregoing,  the  manu- 
facturer or  merchant  interested  in  the  registry  of  the  mark 
must  pay,  in  addition  to  the  fees  or  charges  fixed  by  the  laws 
of  the  State  in  which  application  for  registration  is  first  made, 
the  sum  of  fifty  dollars  gold,  which  sum  shall  cover  all  the  ex- 
penses of  both  Bureaux  for  the  international  registration  in 
all  the  signatory  States. 

ART.  III.  The  deposit  of  a  trade  mark  in  one  of  the  sig- 
natory States  produces  in  favor  of  the  depositor  a  right  of 
priority  for  the  period  of  six  months,  so  as  to  enable  the  de- 
positor to  make  the  deposit  in  the  other  States. 

Therefore,  the  deposit  made  subsequently  and  prior  to  the 
expiration  of  this  period  cannot  be  annulled  by  acts  performed 
in  the  interval,  especially  by  another  deposit,  by  publication,  or 
by  the  use  of  the  mark. 

ART.  IV.  The  following  shall  be  considered  as  trade 
marks:  any  sign,  emblem,  or  especial  name  that  merchants  or 
manufacturers  may  adopt  or  apply  to  their  goods  or  products 
in  order  to  distinguish  them  from  those  of  other  manufacturers 
or  merchants  who  manufacture  or  deal  in  articles  of  the  same 
kind. 

ART.  V.  The  following  cannot  be  adopted  or  used  as  trade 
marks :  national,  provincial  or  municipal  flags  or  coats-of-arms ; 
immoral  or  scandalous  figures;  distinctive  marks  which  may 
have  been  obtained  by  others  or  which  may  give  rise  to  con- 
fusion with  other  marks;  the  general  classification  of  articles; 
pictures  or  names  of  persons  without  their  permission ;  and  any 
design  which  may  have  been  adopted  as  an  emblem  by  any  fra- 
ternal or  humanitarian  association. 

The  foregoing  provisions  shall  be  construed  without  preju- 
dice to  the  particular  provisions  of  the  laws  of  each  State. 

ART.  VI.  All  questions  which  may  arise  regarding  the 
priority  of  the  deposit,  or  the  adoption  of  a  trade  mark,  shall 
be  decided  with  due  regard  to  the  date  of  the  deposit  in  the 


CONVENTIONS  997 

% 

State  in  which  the  first  application  was  made  therefor. 

ART.  VII.  The  ownership  of  a  trade  mark  includes  the 
right  to  enjoy  the  benefits  thereof,  and  the  right  of  assignment 
or  transfer  in  whole  or  in  part  of  its  ownership  or  its  use  in 
accordance  with  the  provisions  of  the  laws  of  the  respective 
States. 

ABT.  VIII.  The  falsification,  imitation  or  unauthorized  use 
of  a  trade  mark,  as  also  the  false  representation  as  to  the  origin 
of  a  product,  shall  be  prosecuted  by  the  interested  party  in 
accordance  with  the  laws  of  the  State  wherein  the  offence  is 
committed. 

For  the  effects  of  this  article,  interested  parties  shall  be 
understood  to  be  any  producer,  manufacturer  or  merchant  en- 
gaged in  the  production,  manufacture  or  traffic  of  said  product, 
or  in  the  case  of  false  representation  of  origin,  one  doing  busi- 
ness in  the  locality  falsely  indicated  as  that  of  origin,  or  in  the 
territory  in  which  said  locality  is  situated. 

ABT.  IX.  Any  person  in  any  of  the  signatory  States  shall 
have  the  right  to  petition  and  obtain  in  any  of  the  States, 
through  its  competent  judicial  authority,  the  annullment  of  the 
registration  of  a  trade  mark,  when  he  shall  have  made  applica- 
tion for  the  registration  of  that  mark,  or  of  any  other  mark 
calculated  to  be  confused,  in  such  state,  with  the  mark  in  whose 
annullment  he  is  interested,  upon  proving: 

a)  That  the  mark,  the  registration  whereof  he  solicits,  has 
been  employed  or  used  within  the  country  prior  to  the  employ- 
ment or  use  of  the  mark  registered  by  the  person  registering  it, 
or  by  the  persons  from  whom  he  has  derived  title ; 

b)  That  the  registrant  had  knowledge  of  the  ownership, 
employment  or  use  in  any  of  the  signatory  States,  of  the  mark 
of  the  applicant,  the  annullment  whereof  is  sought,  prior  to 
the  use  of  the  registered  mark  by  the  registrant  or  by  those 
from  whom  he  has  derived  title; 

c)  That  the  registrant  had  no  right  to  the  ownership,  em- 
ployment or  use  of  the  registered  mark  on  the  date  of  its  deposit ; 

d)  That  the  registered  mark  had  not  been  used  or  em- 
ployed by  the  registrant  or  by  his  assigns  within  the  term  fixed 
by  the  laws  of  the  State  in  which  the  registration  shall  have 
been  made. 

ABT.  X.  Commercial  names  shall  be  protected  in  all  the 
States  of  the  Union,  without  deposit  or  registration,  whether 
the  same  form  part  of  a  trade  mark  or  not. 

ABT.  XI.  For  the  purposes  indicated  in  the  present  Con- 
vention a  Union  of  American  Nations  is  hereby  constituted, 
which  shall  act  through  two  International  Bureaux  established 


998  CONVENTIONS 

one  in  the  city  of  Habana,  Cuba,  and  the  other  in  the  city  of 
Rio  de  Janeiro,  Brazil,  acting  in  complete  accord  with  each 
other. 

ART.  XII.  The  International  Bureaux  shall  have  the  fol- 
lowing duties : 

1.  To  keep  a  register  of  the  certificates  of  ownership  of 
trade  marks  issued  by  any  of  the  signatory  States. 

2.  To  collect  such  reports  and  data  as  relate  to  the  protec- 
tion of  intellectual  and  industrial  property  and  to  publish  and 
circulate  them  among  the  nations  of  the  Union,  as  well  as  to 
furnish  them  whatever  special  information  they  may  need  upon 
this  subject. 

3.  To  encourage  the  study  and  publicity  of  the  questions 
relating  to  the  protection  of  intellectual  and  industrial  property ; 
to  publish  for  this  purpose  one  or  more  official  reviews  con- 
taining the  full  texts  or  digest  or  all  documents  forwarded  to 
the  Bureaux  by  the  authorities  of  the  signatory  States. 

The  Governments  of  said  States  shall  send  to  the  Inter- 
national American  Bureaux  their  official  publications  which  con- 
tain the  announcements  of  the  registrations  of  trade  marks, 
and  commercial  names,  and  the  grants  of  patents  and  privileges 
as  well  as  the  judgments  rendered  by  the  respective  courts  con- 
cerning the  invalidity  of  trade  marks  and  patents. 

4.  To  communicate  to  the  Governments  of  the  Union  any 
difficulties  or  obstacles  that  may  oppose  or  delay  the  effective 
application  of  this  Convention. 

5.  To  aid  the  Governments  of  the  signatory  States  in  the 
preparations  of  international  conferences  for  the  study  of  legis- 
lation concerning  industrial  property,  and  to  secure  such  altera- 
tions as  it  may  be  proper  to  propose  in  the  regulations  of  the 
Union,  or  in  treaties  in  force  to  protect  industrial  property. 
In  case  such  conferences  take  place,  the  Directors  of  the  Bu- 
reaux shall  have  the  right  to  attend  the  meetings  and  there  to 
express  their  opinions,  but  not  to  vote. 

6.  To  present  to  the  Governments  of  Cuba  and  of  the  United 
States  of  Brazil,  respectively,  yearly  reports  of  their  labors 
which  shall  be  communicated  at  the  same  time  to  all  the  Govern- 
ments of  the  other  States  of  the  Union. 

7.  To  initiate  and  establish  relations  with  similar  Bureaux, 
and  with  the  scientific  and  industrial  associations  and  institu- 
tions for  the  exchange  of  publications,  information  and  data 
conducive   to   the   progress   of   the   protection   of   industrial 
property. 

8.  To  investigate  cases  where  trade  marks,  designs,  and 
industrial  models  have  failed  to  obtain  the  recognition  of  regis- 


CONVENTIONS  999 

tration  provided  for  by  this  convention,  on  the  part  of  the 
authorities  of  any  one  of  the  States  forming  the  Union,  and  to 
communicate  the  facts  and  reasons  to  the  Government  of  the 
country  of  origin  and  to  interested  parties. 

9.  To  co-operate  as  agents  for  each  one  of  the  Governments 
of  the  signatory  States  before  the  respective  authorities  for 
the  better  performance  of  any  act  tending  to  promote  or  accom- 
plish the  ends  of  this  convention. 

ABT.  XIII.  The  Bureau  established  in  the  City  of  Habana, 
Cuba,  shall  have  charge  of  the  registration  of  trade  marks  com- 
ing from  the  United  States  of  America,  Mexico,  Cuba,  Haiti, 
the  Dominican  Republic,  El  Salvador,  Honduras,  Nicaragua, 
Costa  Rica,  Guatemala  and  Panama. 

The  Bureau  established  in  the  City  of  Rio  de  Janeiro  shall 
have  charge  of  the  registration  of  trade  marks  coming  from 
Brazil,  Uruguay,  the  Argentine  Republic,  Paraguay,  Bolivia, 
Chile,  Peru,  Ecuador,  Venezuela,  and  Colombia. 

ART.  XIV.  The  two  International  Bureaux  shall  be  con- 
sidered as  one,  and  for  the  purpose  of  the  unification  of  the 
registrations  it  is  provided: 

a)  Both  shall  have  the  same  books  and  the  same  accounts 
kept  under  an  identical  system; 

b)  Copies  shall  be  reciprocally  transmitted  weekly  from 
one  to  the  other  of  all  applications,  registrations,  communica- 
tions and  other  documents  affecting  the  recognition  of  the  rights 
of  owners  of  trade  marks. 

ART.  XV.  The  International  Bureaux  shall  be  governed 
by  identical  regulations,  formed  with  the  concurrence  of  the 
Governments  of  the  Republic  of  Cuba  and  of  the  United  States 
of  Brazil  and  approved  by  all  the  other  signatory  States. 

Their  budgets,  after  being  sanctioned  by  the  said  Govern- 
ments, shall  be  defrayed  by  all  the  signatory  States  in  the  same 
proportion  as  that  established  for  the  International  Bureau 
of  the  American  Republics  at  Washington,  and  in  this  particular 
they  shall  be  placed  under  the  control  of  those  Governments 
within  whose  territories  they  are  established. 

The  International  Bureaux  may  establish  such  rules  of  prac- 
tice and  procedure,  not  inconsistent  with  the  terms  of  this  con- 
vention, as  they  may  deem  necessary  and  proper  to  give  effect 
to  its  provisions. 

ART.  XVI.  The  Governments  of  the  Republic  of  Cuba  and 
of  the  United  States  of  Brazil  shall  proceed  with  the  organiza- 
tion of  the  Bureaux  of  the  International  Union  as  herein  pro- 
vided, upon  the  ratification  of  this  Convention  by  at  least  two- 
thirds  of  the  nations  belonging  to  each  group.* 


1000  CONVENTIONS 

The  simultaneous  establishment  of  both  Bureaux  shall  not 
be  necessary ;  one  only  may  be  established  if  there  be  the  num- 
ber of  adherent  governments  provided  for  above. 

ART.  XVII.  The  treaties  on  trade  marks  previously  con- 
cluded by  and  between  the  signatory  States  shall  be  substituted 
by  the  present  convention  from  the  date  of  its  ratification,  as 
far  as  the  relations  between  the  signatory  States  are  concerned. 

ABT.  XVIII.  The  ratifications  or  adhesion  of  the  Ameri- 
can States  to  the  present  Convention  shall  be  communicated  to 
the  Government  of  the  Argentine  Republic,  which  shall  lay 
them  before  the  other  States  of  the  Union.  These  communica- 
tions shall  take  the  place  of  an  exchange  of  ratifications. 

ABT.  XIX.  Any  signatory  State  that  may  see  fit  to  with- 
draw from  the  present  Convention  shall  so  notify  the  Govern- 
ment of  the  Argentine  Republic,  which  shall  communicate  this 
fact  to  the  other  States  of  the  Union,  and  one  year  after  the 
receipt  of  such  communication  this  Convention  shall  cease  with 
regard  to  the  State  that  shall  have  withdrawn. 

In  Witness  Whereof,  the  Plenipotentiaries  and  Delegates 
sign  this  Convention  and  affix  to  it  the  Seal  of  the  Fourth  Inter- 
national American  Conference. 

Made  and  signed  in  the  City  of  Buenos  Aires,  on  the  twen- 
tieth day  of  August,  in  the  year  one  thousand  nine  hundred  and 
ten,  in  Spanish,  English,  Portuguese  and  French,  and  filed  in 
the  Ministry  of  Foreign  Affairs  of  the  Argentine  Republic  in 
order  that  certified  copies  may  be  made  to  be  forwarded  through 
appropriate  diplomatic  channels  to  each  one  of  the  signatory 
Nations. 

*The  following  are  the  countries  that  have  ratified  this  Convention,  and  date  of 
ratification:  Northern  Group — United  States  of  America,  March  21,  1911;  Costa 
Rica,  August  7,  1915;  Cuba,  November  15,  1916;  Dominican  Republic,  April  18. 
1912;  Haiti,  October  8,  1918;  Honduras,  October  16,  1913;  Guatemala,  May  10,  1912; 
Nicaragua,  March  13,  1913 ;  Panama,  June  12,  1913.  Southern  Group — Brazil,  Novem- 
ber 9,  1914;  Bolivia  (adhered),  May  15,  1914;  Ecuador,  November  4,  1913;  Paraguay, 
May  29,  1917;  Uruguay,  August  7,  1919;  Peru,  April  14,  1920.  The  following  coun- 
tries have  not  ratified:  Northern  Group — Mexico,  Salvador.  Southern  Group — 
Argentine  Republic,  Chile,  Colombia,  Venezuela. 


MONTEVIDEO  CONVENTION* 

ARTICLE  1.  Every  person  to  whom  there  is  granted  in  one 
of  the  signatory  States  the  right  of  exclusively  using  a  mark  of 
commerce  or  of  manufacture  shall  enjoy  the  same  privilege  in 
the  other  States  subject  to  the  formalities  and  conditions  estab- 
lished by  their  laws. 

ART.  2.  The  ownership  of  a  mark  of  commerce  or  of  manu- 
facture includes  the  power  to  use  it,  assign  it,  and  to  transfer  it. 

ART.  3.  The  visible  sign,  emblem,  or  name  that  the  mer- 
chant or  manufacturer  adopts  and  affixes  to  his  merchandise 
and  products  for  the  purpose  of  identifying  them  from  those  of 
other  manufacturers  or  merchants  that  deal  in  articles  of  the 
same  kind,  shall  be  considered  a  mark  of  commerce  or  of  manu- 
facture. 

There  belong  likewise  to  these  classes  of  marks  designs  of 
manufacture  or  work  that  by  means  of  weaving  or  imprinting 
are  stamped  on  the  product  itself  that  is  placed  on  sale. 

ART.  4.  Falsifications  and  counterfeits  of  marks  of  com- 
merce and  of  manufacture  shall  be  prosecuted  before  the  courts 
in  accordance  with  the  laws  of  the  State  in  whose  territory  the 
fraud  is  committed. 

ART.  5.  In  order  that  the  present  Convention  may  come 
into  force,  it  is  not  necessary  that  it  be  ratified  simultaneously 
by  all  the  signatory  States.  Any  State  having  approved  it  shall 
notify  its  adhesion  to  the  Governments  of  the  Argentine  Repub- 
lic and  of  the  Oriental  Republic  of  Uruguay  (in  order  that  they 
may  inform  the  other  contracting  States  thereof.  Such  notifi- 
cation shall  take  the  place  of  exchange  of  ratifications. 

ART.  6.  As  soon  as  an  exchange  of  ratifications  shall  have 
taken  place  in  the  manner  indicated  in  the  preceding  article,  the 
present  Convention  shall  come  into  force,  from  that  moment,  for 
an  indefinite  period. 

ART.  7.  If  one  of  the  signatory  States  shall  think  fit  to 
renounce  the  Convention  or  to  introduce  modifications  therein 
it  shall  inform  the  other  States;  but  it  shall  only  be  released 
after  the  expiration  of  two  years  from  such  renunciation,  during 

*  Ratified  by  Argentina,  Paraguay,  Peru  and  Uruguay.  Bolivia,  the  only  other 
signatory,  did  not  ratify. 


1002  CONVENTIONS 

which  period  efforts  shall  be  made  to  arrive  at  a  fresh  under- 
standing. 

ART.  8.  Article  7  may  be  extended  to  any  of  the  States 
that  have  not  taken  part  in  the  Congress  and  which  may  desire 
to  adhere  to  the  present  Convention. 

ADDITIONAL  PROTOCOL 

ARTICLE  1.  The  laws  of  the  contracting  States  shall  be 
applied  in  cases  occurring,  whether  the  persons  interested  in 
legal  matters,  whereof  it  be  a  question,  be  natives  or  foreigners. 

ART.  2.  Their  application  shall  be  made  ex  .officio  by  the 
Judge  of  the  case,  without  prejudice  to  the  parties  being  able 
to  allege  and  to  prove  the  existence  and  subject-matter  of  the 
law  invoked. 

ART.  3.  Every  recourse  granted  by  the  law  of  procedure 
of  the  place  of  the  judgment  for  cases  decided  according  to  its 
own  legislation,  shall  likewise  be  admitted  for  those  that  are  to 
be  decided  by  applying  the  laws  of  any  of  the  other  States. 

ART.  4.  The  laws  of  the  other  States  shall  never  be  applied 
against  political  institutions,  laws  of  public  order,  or  good 
morals  of  the  place  where  the  case  is  tried. 

ART.  5.  In  accordance  with  the  stipulation  in  this  Protocol, 
the  Government  shall  be  obliged  to  transmit  to  each  other 
reciprocally  two  authentic  copies  of  the  laws  in  force,  and  of 
those  that  shall  subsequently  be  sanctioned  in  their  respective 
countries. 

ART.  6.  The  Governments  of  the  signatory  States  shall 
declare,  on  approval  of  the  treaties  concluded,  whether  they  will 
accept  the  adherence  of  Nations  not  invited  to  the  Congress  in 
the  same  form  as  that  of  those  Nations  that,  having  agreed  to 
the  idea  of  the  Congress,  have  taken  no  part  in  its  deliberations. 

ART.  7.  The  provisions  contained  in  the  articles  that  pre- 
cede shall  be  considered  an  integral  part  of  the  treaties  to  which 
they  refer,  and  their  duration  shall  be  the  same. 


INDEX 


PAGE 

Alaska  (see  United  States  of  America) 948 

Argentina 

Australian  Commonwealth  . .. 

Austria 

Bahama  Islands 

Barbados 

Basutoland 

Belgian  Congo  (see  Congo  Free  State) 190 

Belgium 74 

Bermuda   78 

Bibliography ix 

Bohemia  (see  Czechoslovakia) 238 

Bolivia  88 

Bosnia  (see  Jugoslavia) 510 

Brazil  99 

British  Central  Africa  Protectorate 107 

British  Guiana 108 

British  Honduras 124 

British  India  (see  India) 462 

British  North  Borneo 125 

Bulgaria 127 

Canada 138 

Ceylon 148 

Channel  Islands 162 

Chile 163 

China 165 

Colombia 168 

Colony  of  Seychelles 179 

Commonwealth   of   Australia    (see   Australian   Common 

wealth) 12 

Congo  Free  State 190 

Conventions — International : 

Convention  of  Paris,  1883,  revised  at  Brussels,  1900, 
Washington,  1911,  for  the  Protection  of  Indus- 
trial Property  982 


1004  INDEX 

PAGE 

Arrangement  of  Madrid,  1891,  revised  Washington, 
1911,  Concerning  International  Registration  of 

Marks   990 

Arrangement  of  Madrid,  1891,  revised  Washington, 
1911,  Concerning  the  Repression  of  False  Indica- 
tions of  Origin  of  Merchandise 994 

Pan- American  Convention,  Buenos  Aires,  1910 996 

Montevideo  Convention 1001 

Costa  Rica  193 

Croatia  and  Slavonia  (see  Jugoslavia) 510 

Cuba 195 

Curacao 209 

Cyprus 222 

Czechoslovakia 238 

Dalmatia  (see  Jugoslavia)  510 

Danzig  (Free  City  of) 241 

Denmark 246 

Dominican  Republic 252 

Dominion  of  Canada  (see  Canada) 138 

Dutch  Indies 260 

Dutch  West  Indies  (see  Curacao) 209 

Dutch  Guiana  (see  Surinam) 878 

East  Africa  Protectorate 261 

Ecuador 280 

Egypt 287 

Eritrea 288 

Esthonia 292 

Falkland  Islands  297 

Faroe  Islands  (see  Denmark) 246 

Fiji  Islands 299 

Finland   303 

Formosa  (see  Japan) 484 

France   308 

French  Colonies  (see  France) 308 

Gambia 314 

Germany   334 

German  East  Africa  (see  Tanganyika  Territory) 900 

Gibraltar  342 

Gold  Coast  Colony 343 

Great  Britain  .  363 


INDEX  1005 

PAOE 

Greece   406 

Grenada 410 

Guam  (see  United  States  of  America) 948 

Guatemala 411 

Guernsey  (see  Channel  Islands) 162 

Haiti 418 

Hawaii 421 

Herzigovina  (see  Jugoslavia) 510 

Holland  (see  Netherlands) 620 

Honduras 422 

Hong  Kong 427 

Hungary   445 

Iceland 455 

India 462 

Information,  Sources  of ix 

Italy  463 

Jamaica  467 

Japan 484 

Jersey  (see  Channel  slands) 162 

Jugoslavia  510 

Korea 539 

Latvia  » 543 

Leeward  Islands 545 

Liberia 557 

Lithuania 561 

Luxemburg  562 

Malta 566 

Mauritius  581 

Mexico   , 589 

Montenegro  (see  Jugoslavia) 510 

Morocco  (French  Zone  only) 605 

Netherlands   620 

Newfoundland   632 

New  South  Wales  (see  Australian  Commonwealth) 12 

New  Zealand 644 

Nicaragua  . . . — 671 

Nigeria   675 

Norway   695 

Nyasaland  (see  British  Central  Africa  Protectorate) . . .  107 

Palestine  .  703 


1006  INDEX 

,  PAGE 

Panama 711 

Panama  Canal  Zone  (see  United  States  of  America) ....  948 

Papua  (see  Australian  Commonwealth) 12 

Paraguay 718 

Peru 725 

Philippine  Islands 731 

Poland  738 

Porto  Rico  743 

Portugal 748 

Portuguese  Colonies 756 

Angola, 

Cape  Verde, 

East  Coast,  Government  Territory, 

East  Coast,  Nyassa  Company, 

East  Coast,  Mozambique  Company, 

Guinea, 

Macao, 

Portuguese  India, 

St.  Thomas  and  Princes  Islands, 

Timor. 

Queensland  (see  Australian  Commonwealth) 12 

Bhodesia   760 

Eumania 765 

Russia   771 

St.  Lucia 772 

St.  Vincent 788 

Salvador   789 

Serbia  (see  Jugoslavia) 510 

Seychelles  Islands  (see  Colony  of  Seychelles) 179 

Siam 802 

Sierra  Leone  810 

South  African  Union 828 

South  Australia  (see  Australian  Commonwealth) 12 

Spain 850 

Straits  Settlements 877 

Surinam 878 

Sweden 879 

Switzerland  886 

Syria  and  Lebanon 893 

Tanganyika  Territory 900 


INDEX  1007 

PAGE 

Tasmania  (see  Australian  Commonwealth) 12 

Trinidad  and  Tobago 921 

Tunis   931 

Turkey 937 

Uganda 943 

Union  of  South  Africa  (see  South  African  Union) 828 

United  Kingdom  of  Great  Britain  and  Ireland  (see  Great 

Britain)   363 

United  States  of  America 948 

Uruguay  963 

Venezuela   972 

Victoria  (see  Australian  Commonwealth) 12 

Virgin  Islands  of  the  U.  S 976 

Western  Australia  (see  Australian  Commonwealth) . 12 

Zanzibar 977 


LAW  LmRARY 

UNIVERSITY  OF  CALIFORNIA' 
LOS  ANGELES 


